Is it really necessary to register a Trademark?

This is the third part response to a question posed by Jen after reading earlier Legaleasy posts, with a delay of about a week. Sometimes life gets in the way!


Trademark registration, is it really necessary?


Great question! When you are first starting a business you probably have other items of expenditure that are going to actually help generate your business income which should have higher priority than trademark registration. In a start up business, unless you have loads of money to spend on it, earning income is the most important aspect of the business, so focus there first.


If you are concerned that your really cool logo, catchphrase or name is going to be immediately snaffled by a competitor, then you can note a little TM after it and start making enquiries about trademark registration. TM is a warning to consumers and businesses that you are declaring the name, logo etc to be a trademark of your business and something you intend to take action to protect. Have a look at Google... they only use a TM and haven't go so far as to register their name as a trademark. Don't for a minute think that they wouldn't take action to do something about you using the name for your own business!


On the other hand, look at Apple®. Apple® register all of their trademarks and take prompt action to protect them. So what is the difference?


Suing for trademark infringement is much easier and cheaper if you have a registered trademark. If you haven't registered a trademark you have to put a lot more information before the court to demonstrate that it is in fact a trademark and should belong to you to the exclusion of others before you can challenge someone else's usage of it. Some companies are pedantic about their trademarks being used, others are relaxed and consider it additional free promotion.


What you need to consider is how your business will be impacted if you do or don't register a trademark and what action you are prepared to take to protect it whether or not it is registered.


Effective trademark registration is likely to require assistance from someone who has done it before, particularly if you are wanting to argue that a combination of otherwise generic words should be trademarked. For example, it is not going to be easy to get trademark registration for something like "The Timber Shop" because it is not sufficiently distinctive or unique.


Logos and names will generally not get registration if they are considered deceptively similar to already registered logos or names. The process can be longwinded as well as it can take months to assess you trademark for registration, and if there are any issues or questions that need answering prior to registration, more time.

Registration bodies are generally government or semi-government bodies. Only pay for registration through a government endorsed site, the others are scams. If you get an email inviting you to register with an organisation, check them through government sites before handing over any money, it will save you thousands! I've had a look at a few official sites lately - in Australia the official register is IP Australia (www.ipaustralia.gov.au) - and they list some of the current scams going around and the kind of money those organisations are making, without giving you any protection at all.

I'm currently involved in assisting the process of renewing and registering about a dozen trademarks with a company I work with and the cost that they've been quoted works out at about $2,000 per trademark.

So, unless you think you have an absolute winner of a name that will need protection the instant you make it public, don't spend the money and wait months to start your business. Start your business and guage the benefit of registration before you apply.



Thanks for waiting Jen, Let me know if this helps!

Jumping through domain name hoops

The law around the purchase, sale and ownership of domain names is developing all the time. There are a number of individuals and companies who have diligently gone around 'acquiring' names that can be associated with existing celebrities or businesses and put premium prices on those domain names and there has been a fair amount of discussion around whether or not that behaviour should be regulated. Some companies and individuals have sued those enterprising entreprenuers, calling them 'cyber squatters', seeking to obtain the domain names without the large price tags. (paying the lawyers instead)

Firstly, what is a domain name? Well, I had a look in Wikipedia for a useful definition and found something equivalent to legalese, so my alternative (and possibly not wholly technically accurate) explanation is that the domain name provides people surfing the web with a virtual address to find you. Thats it. It doesn't necessarily give you a website and it doesn't automatically appear as a webpage just because you purchase the address. It does give you the exclusive right to attach webpages or a website to the address for people to find for as long as you remain the registered owner.

Like registering a business name, there aren't a lot of hoops to go through. You find a domain name seller (from my experience www.godaddy.com is pretty good), search the site for the domain name you want, and purchase it if it is available.

Again, hints are:

• don't try and register something that you know is someone elses brand name, it'll only end in tears
• know who or what entity is going to own the domain name and whether that is the same person or entity that is going to operate the website (it doesn't have to be, but you should put a written agreement in place between the entities to clarify the legal relationships if it isn't)
• know why you want a particular domain name and how much you are prepared to pay for it if someone else has already registered it

You can buy a domain name from an existing registered owner rather than through a domain name company, but if you want to go down that path be careful about handing any money over before you have access to the domain name. Chasing up money you have paid overseas is expensive, labourious and often unsuccessful. Obviously a domain name which comes up without website content attached to it has the chance of being easier and cheaper to acquire than a domain name with a website attached.

.. tomorrow, a note on trademarks...

Jumping through hoops

This question comes from Jen after reading some of the earlier posts on the Legaleasy blog.

What are all the hoops we need to jump to register a business name, domain name and trademark it if that is neccessary?

Thanks for the question Jen. You actually have three questions roled into one, so I'll deal with them one at a time.

Registering a business name
Registering a business name in Australia is really easy. You simply go online to any of the Offices of Fair Trading or Consumer Affairs around the country, or turn up at one of their shopfronts (addresses are online) and complete a fairly simple form, pay a fee of around $80 and voila! I've listed the links for all of those offices below so that you don't have to search for them.

ACT - Office of Regulatory Services
NSW - NSW Office of Fair Trading
NT - Department of Business, Industry and Resource Development
QLD - Office of Fair Trading
SA - Office of Consumer and Business Affairs SA
TAS - Tasmania Office of Consumer Affairs and Fair Trading
VIC - Consumer Affairs Victoria
WA - Department of Consumer and Employment Protection

The things you need to do before you fill in an application for registration of a business name are:

1. Know who the owner will be, whether that is you, a partnership, trust or a company.
2. Do a business name search on www.asic.gov.au so that you know the name you want to register isn't already registered to someone else. You used to have to secure the name first, now you don't, but you do need to list three preferences.

Note, registering a business name is not the same as starting a company and it doesn't create a separate legal entity. The owner of the business name is the legal entity. You can apply for an ABN for the business name that you register and you can use it on bank accounts.

Registration is renewable every three years.

Tips for registering a business name - be careful if you want to try and play on the name of another business. Crazy John's (mobile phone company) successfully sued Crazy Ron's (mobile phone company) for breach of trademark even though there was no problem with registering the name in the first place.

... more tomorrow ..

What are the components of a disclaimer that covers me legally?

I hope you all enjoyed the series of exchanges with John about bad service and demands for payment. It was certainly fun for me! If you have a series of questions that you'd like to have answered, please do let me know. Now we're moving on to different topics...

Disclaimers

The purpose of a disclaimer is to let your client or customer know in very clear terms what their responsibility is and what is not your responsibility. It is not possible to disclaimer all legal liability because there are certain obligations implied into contracts. In Commonwealth countries those obligations were originally common law (law of common practice recognized by the courts) and are now included in legislation.

A disclaimer needs to be written clearly and acknowledged by the customer or client. Disclaimers written in small font and hidden in documents are generally not effective. You need to be able to demonstrate that the disclaimer was brought to the attention of the customer or client and that they have acknowledged having read it and agreed to the terms. We know that not everyone reads them, so you need a process which makes it the clients obligation to explain why they didn’t if they didn’t. You might be familiar with the tick boxes for online forms (booking flights online is a good example) where you cannot proceed without ticking the box, and next to the tick box it says “I have read and accept the airline’s Terms and Conditions”.

What's the strangest disclaimer that you have ever read?