You know that age old saying, “imitation is the highest form of flattery”? Well, what happens when that imitation turns into full on, downright, blatant copying?!
You own a business. It’s your baby, your sweat and tears, your hours of missed family and me-time. It’s unique and original and it’s totally you. But what is going to stop someone else from swooping right in (yes, like those damn magpies!) and taking your business and claiming it as their own?
Well, this is where the importance of registering your trade mark comes in! Let me break it down for you.
What exactly is a trade mark?
A trade mark is a distinct sign or symbol that a business can use to claim exclusive control of their product or service. Basically, a trade mark is like a big notification sign that alerts your current and future customers that a product or service that they’re buying/using/lusting over belongs to YOU!
A lot of people will associate trade marks with a logo or a name like the big bright yellow M (is anyone suddenly craving chicken nuggets?) or the infamous duo Ben & Jerry’s. But you can actually trade mark things like a shape, colour, label, packaging style or even a sound! You know that absolutely iconic “DUN DUN” sound on Law & Order (okay seriously how good does nuggets, ice cream & SVU sound right now?) that we have come to know and love? That’s trade marked! Universal holds the trade mark, which means that they are the reigning victor and the only business that can use this sound or provide permission for someone else to use it!
So now that you’ve got the lowdown on what a trade mark is, let’s talk about why it’s important.
Quite simply, registering your trade mark will stop those shady, stealthy, grimy hands from undercutting you and the empire that you’ve built! Unfortunately, with the internet comes an overwhelming amount of ways for people to share, receive and in this case, copy information. It has become blatantly easy for another business to imitate another business’ name or logo design. It’s as simple as screenshotting a logo and texting that straight to a supplier for a similar design to be created. This copycat business can then pretend that they are associated with your business or hold the same reputation or quality products and lure your customers - who you have invested so much valuable time, money and love into building - towards their dark, evil side! It’s yucky and it’s unfair but it totally can happen.
I don’t have a registered trade mark, what happens if someone has sticky fingers?
The short answer is, register your trade mark now! Registering your trade mark will mean that you will have the highest shield of protection under the Trade Marks Act 1995 (Cth) (let’s refer to it as TMA). The TMA sets out the rules that will help you to protect your business, its uniqueness and its distinction from the competitors. But remember, this is only so if you have a registered trade mark.
If your business’ trade mark is unregistered and someone decides that they’d like to take your brand for a spin, you won’t be able to enforce your rights under the TMA. You can definitely still fight it in court but it will be a lot harder to fight it. On top of that, there’s no stopping your opponent from going right ahead and registering the trade mark before you. Remember, this is your baby! You need to protect it at all costs!
No clue where to start with registering your trade mark? What about signing up to our Tricks of the Trade Mark course? It’s the perfect, bite sized, step-by-step guide to helping you protect your beloved business.
Okay, well my trade mark is actually registered, what can I do?
First up you need to identify whether the other person is using a sign that is substantially identical or deceptively similar to your registered trade mark; and if the use is in relation to the goods or services the trade mark is registered for.
What is substantially identical?
To identify whether two trade marks are substantially identical requires a side by side comparison of the trade marks, where you need to identify their essential features, similarities and differences.
What is deceptively similar?
To identify whether two trade marks are deceptively similar is a bit trickier. It requires a comparison of the overall impression given by one trade mark versus the impression left by the other trade mark. If there is a likelihood of confusion between the two, the the trade marks will be considered deceptively similar.
Compare your goods and services
As a registered trade mark owner, you will know that your trade mark registration only protections you for the goods and/or services for which you registered your trade mark. You would need to compare your goods and service to ascertain whether they are closely related or in the same description of your registered trade mark. Goods and/or services need not be registered under the same description for infringement to occur, the issue is whether there will be a likelihood of a consumer being deceived or confused. It is for the infringer to show that there is no likelihood of confusion.
Monitoring Infringement i.e. be proactive!
Trade Mark Database
If you have a registered trade mark it is also good practice to regularly monitor it for infringement. You can check IP Australia's database known as ATMOSS (Australian Trade Mark Online Search System).
ASIC (Australian Securities and Investments Commission)
By checking in and searching for names the same as yours on ASIC's website it can give you an indicator of whether someone intends to begin trading in a name that is the same or similar to yours. Remember though you still need to do your due diligence to identify whether they are trading under the same name for the same or similar goods and/or services to yours.
You might want to think about searching:
White pages/yellow pages or equivalent business directories
Top Trick: Search for misspelling of your business name not just the actual spelling.
How to Stop Infringement?
Once you have identified that your trade mark is being infringed, you should, having collected all the evidence reach out to the infringing party and ask them to stop. Make sure to keep things in writing but also keep a cool calm head, be professional, make sure you can back up what you are saying. Typically with trade mark infringement, it may also include claims for passing off and misleading and deceptive conduct under Australian Consumer Law.
It is however best practice to take a formal approach so..... get to your post office!
Cease and Desist Letter
Sending a Cease and Desist Letter is usually your first official port of call. It’s cost effective and it can effectively scare the bejeebus out of your competitor and let them know that YOU. MEAN. BUSINESS.
The letter will usually contain:
- The reasoning behind why you think this copycat business is infringing your trade mark
- Why and how this is affecting your business
- A warning that if this copycat business does not stop or resolve the issue, you may commence legal action
It is important to set out matters in your letter carefully and consider the tone of your letter. Each situation is different and each response may also be different, some people may prove reasonable and some may not. It is always best to approach matters in a factual way. It is a lot more cost effective to negotiate an outcome rather than for the matter to escalate to court, so remember cool calm head needs to prevail and stick to the facts.
Want more? Foundd Legal’s Tricks of the Trade Mark course can also help you to draft an effective Cease and Desist Letter if you are in a bind!
If they are not budging, you could try…
Alternative Dispute Resolution
The next step would be to seek out alternative solutions such as mediation or negotiation. Mediation is an informal meeting where a neutral and objective third party will sit down with you and the copycat business and help to guide both of you towards a resolution. Think of it like…when your sister would eat your favourite snack that you have been saving at the back of the fridge and it becomes a screaming match. Your poor mother is now in the line of fire, helping both of you to calm down without taking sides.
A negotiation is also similar to this, however it is more formal, lawyers are usually involved and generally, both parties end up signing a written agreement so it’s more legally legit.
And if they are really, really not budging…
You can commence legal proceedings.
There are a few different types of court orders that you may be able to ask for.
Firstly, you can get either an interim injunction or a permanent injunction.
If you’re really in a pickle and the nasty copycat’s behaviours (we call them infringers in the legal world) are really affecting your business and livelihood (e.g. if they are not stopped right away, there could be irreparable damage to your business and/or income), you can plead your case for an interim injunction. This is an urgent but temporary order that will prohibit the person from using your trade mark pretty damn quickly! However, you will have to show the court that the order is urgent and that there is sufficient evidence to prove your case. Remember that this is a temporary order so it won’t last forever. You’ll have to gather your receipts to get the grand slam of a permanent injunction. A permanent injunction will mean that the infringer will be prohibited from using your trade mark for as long as the order is active!
You can also ask for cash.
No doubt that if a copycat is mishandling your trade mark and using it to their own benefit, they will be driving customers away from you and into their hands. This means that you are losing out on sales. Not only that but your business may also be bringing in sponsorship deals, discounted products and services, revenue from advertisements on your website…the list goes on. Get out your Excel spreadsheet and count up the numbers, because you also have the right to ask the court to order that they pay you financial compensation for any losses that you have incurred while they were using your trade mark (damages), or for any profits that they have made due to the copying of your trade mark (account of profit).
But look we are not going to lie, court is hella’ expensive, it can take months or even years and yes, you will have to wear boring, uncomfortable business clothes every time you go to court.
We definitely don’t want to be at this point...but by registering your trade mark as soon as possible, you are going to be in a much stronger legal position to fight!
How can Foundd Legal make things easier for you?
- Get your application right, the very first time! Let us do the groundwork for you so that you don’t waste time and money making errors and having to re-apply.
- Doing the right research and checks. When applying for a trade mark you have to be careful about other trade marks that are already registered. You need to know what to look for during your search so that the trade mark you are applying for doesn’t have similar or identical marks to an already registered one!
- Get notified of any issues. As we will be listed on your application, we will be notified if there are any issues with your application and can help you get right on to resolving it.
Riz McDonald is an e-commerce business owner, business coach, podcaster and a lawyer for over 16 years. She’s also a mum, a wife, and a lover of good wine...she only ever drinks the cheap stuff when she’s stoney broke.
***Disclaimer. Please read!!***
This article is for general information purposes only and should be used solely as general guidance. It does not and is not intended to represent legal advice or other professional advice.
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