Trademark protection and small business – Why bother trademarking?

In Australia, the fundamental rules to ensure effective trademark protection are as follows:

1. First to use
2. First to file

First to use means that the company, product or service name was created uniquely by you. This could be a time-consuming process however it is worthwhile to spend some time on as it will benefit from unknowingly infringing on someone else’s trademark. You must conduct due diligence before launching your brand. Make sure you check the business name register, Google the brand, check the domain registry and trademark registry. If similar companies or product/service names come up on the searches, then it has already been used therefore trademark protection may be difficult to enforce even if you are successful in registering the trademark first.

First to file means that you are first to apply for the trademark – if you are first to file, it gives you protection from the time of the trademark registration date. It could be difficult to stop others with the same name if they have been concurrently using the brand prior to registration date of the trademark.

Many small business owners do not trademark their brand from the start and they run into issues when they become relatively successful in their business after some years of trading in the marketplace. Part of the reason why they don’t trademark is lack of education about the importance of brand protection. A business name, a company name, domain and/or sales history does not protect your brand, only a trademark does.

One such instance occurred in when in 2010, Mrs Butterfingers was established by Jeff and Jane (J & J) as a catering company. J & J bought the domain name www.mrsbutterfingers.com.au and they secured the company name Mrs Butterfingers Pty Ltd. Like any new business, they did not think of trademarking as the business had no clients yet and they didn’t know how well the business will perform.

Fast forward to 2017, when business is flourishing…they are upset because they just found out that there is another Mrs Butterfingers catering group. They found this out by accident when one of their clients told them that their daughter was very unhappy with their service when she had used their service for her boardroom lunch at her workplace. The owners asked their client who their daughter worked for as they could not recall her name or a client that used them regularly in the city for boardroom lunches. After some investigation, they found out about Mrs Butterfingers Food Group. They were a direct competitor and using a similar name!

J & J then contacted Seriously Trademarks to find out how they could stop Mrs Butterfingers Food Group from using their name.

Lucky for J & J, Mrs Butterfingers was available to trademark as no one in Australia had applied for and registered the trademark.

Firstly, Seriously Trademarks assisted J & J to trademark their brand in the catering class. Secondly, they needed to find out how long the competitor had been operating. Even if the client obtains the trademark registration, they need to overcome the argument by the other party of “honest concurrent use”. This requires legal action/negotiation, at
Seriously Trademarks®, we are not a law firm, we do not get involved in infringement litigation or legal matters, however one thing we do know is that legal fees can be expensive for a small business. If you don’t get your trademark protection right from the beginning, it becomes a costly exercise to protect and enforce.

If J & J trademarked in 2010, they would have been able to enforce their brand rights as they would have owned their brand from 2010. Even if the competitor started in 2015, the ambiguity as to who owns the brand is straight forward. As stated previously, trademark protection begins from the date of trademark registration.

Our recommendation for established businesses is that if they don’t own a trademark and they are attached to their brand, they have built a reputation and it would be costly to rebrand, then they need to trademark as soon as possible, just to ensure they get to continue to keep their name. It is not a costly exercise, it works out to be about $149+GST per year if you average out over the ten-year protection period.

Seriously Trademarks offers trademark branding strategies, filing, research and registration services. We love helping clients protect their brand(s) both in Australia and overseas. We want our clients to succeed and therefore take extra care when they come to us for guidance.

Guest Blogger
Binh Rey
Managing Director
Seriously Trademarks®

Note: the names of the client and brand have been changed to protect their identity.

IMPORTANT: Seriously Trademarks®, We do not provide legal advice. We provide administrative services only including trademark searches, application and registration filing services. Neither the content in this article/blog or information delivered by our staff constitutes legal advice. We are registered Trademark Attorneys with IP Australia (The Trademark authority in Australia), our trademark attorney code is: 1U.

Seriously Trademarks is a registered trademarked, all rights and protection are owned by The trustee for Rey Family Investment Trust.

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