As we discussed in Part 1, in today’s increasingly competitive marketplace, having a strong brand is fundamental in establishing your business and its’ edge over your rivals. Once you’ve taken the time and effort to create a strong brand it is essential that you take steps to put in place an effective brand protection strategy.
What is a brand protection strategy?
Brand protection encompasses the measures taken to prevent someone from illegally making and selling a product, or offering services using a brand name owned by another company. In short, a brand protection strategy helps to safeguard your most valuable asset.
A good brand protection strategy will not only identify your prospects of registering and being able to protect your brand, but can mitigate your risk of infringing someone else’s brand. In turn this will lead to a more valuable brand, as well as saving you money in the long run.
How does brand protection work?
Brand protection starts with several legal processes that need to be completed correctly to ensure that you are fully compliant with, and covered by, the law.
Many start-ups and small businesses are of the misconception that registering a business name gives them the exclusive rights to use that name as their brand. However, the only way to ensure you have the rights to use your brand in the market is to get professional trademark clearance searches performed, accompanied by the right legal advice, and then to implement an appropriate strategy to ensure that you can maintain those rights exclusively.
Trademark clearance searching is an important risk management tool for business and should be done during the brand development stage. It identifies any potential issues early on and is a gauge for determining your freedom to operate in the marketplace using your brand. This can ultimately save thousands of dollars on unwanted expenses such as legal and rebranding costs.
Brand protection options
There are several legal avenues to consider when creating your brand protection strategy. We set out some key options for protecting your brand below.
Trademark registration is one of the most effective ways to protect your brand in the market. Under the Trade Marks Act 1995, trademark registration grants businesses a statutory right to exclude others from using the trade mark for the goods and services for which it is protected. The registration can be renewed perpetually every ten years, and protection is Australia-wide.
A trademark registration can protect most elements of your brand. It can protect the brand name, a tagline or phrase, product packaging or shapes (including the product itself), a logo or pictorial design, brand colours, a scent, a sound and even a movement that is distinctive of your brand! The options for trademark registrations are not limited as long as the trademark is distinctive, is being used in trade and does not describe the type, kind of location of the goods or services that you are selling.
Most importantly, a trademark registration means that you have an asset for your business which can be sold, licensed to others or used as a form of security. You can control the use of the brand and stop others from using it. If you sell goods you can even arrange for customs to stop counterfeit or otherwise infringing goods entering Australia. Trademark registration also places the public on notice of your rights which can be an effective deterrent for would-be infringers and can save you the cost of actively trying to stop them using a trademark that is similar to yours.
Misleading or deceptive conduct
It is illegal for a person to engage in conduct, in trade, that is likely to create a false impression about goods or services in the marketplace. This is referred to as misleading or deceptive conduct under Australian Consumer Law and State equivalents. Misleading or deceptive conduct is not restricted to written words; it can constitute spoken words, images and even gestures. A company can engage in misleading or deceptive conduct through the actions of its employees or agents.
Passing off is an action recognised by the courts under ‘common law’ and can be used to enforce both registered and unregistered trademarks. Passing off protects your business reputation and goodwill built up through your brand, from unauthorised use of one or more elements of your brand (or something similar) that wrongly implies some kind of association or affiliation with your business. This action is particularly important where your brand or a similar version of it is applied to inferior goods or services. Passing off has similar elements to the misleading or deceptive conduct provisions under Australian Consumer Law, though arguably there are greater obstacles to overcome in order to be successful in passing off. Further, unlike trademark registration, protection is limited to the geographic region where you trade and so if you are only trading in say, the greater Melbourne area, it is going to be very difficult for you to stop someone using a similar brand outside of Melbourne. Further, you must be able to prove that you have a significant reputation in your brand which can be costly, impractical and often unrealistic for small business.
Copyright is the recognition of a person’s right to protect their original, intellectual effort (eg a logo design). In Australia, copyright is automatically protected under the Copyright Act 1967 for a term of 70 years post-death of the creator of the work.
Copyright protection is Australia-wide and to some extent global, via international treaties and conventions. Copyright often subsists in a logo and so it is important to ensure that you own the copyright in your logo by having it assigned to you when outsourcing the design. However, copyright will not stop people from using your brand name or other elements of your brand that lack originality. This is one reason why you need a more complete brand protection strategy that covers all distinctive elements of your brand.
How to get started
Not sure where to start? Don’t worry! Here at Ethikate we specialise in brand protection. We will work closely with you to create a tailored protection strategy that not only addresses your specific business needs and future plans, but is also cost-effective. Find out more here.
Stay tuned for Part 3…