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!