When choosing a brand name

Having an Internet website to establish presence or generate revenue in the marketplace has almost become rudimentary for most businesses.

Therefore, if you intend on introducing a new trade mark or adopting a new brand name then do some preliminary checks before you decide on a brand name and register the name.

As a first step, do some online searches to check and see if the name is available For example, check to see if the domain, business/company name are all available. Do some general internet searches (on Google for example) and a trade mark search to see if it’s already registered or a similar name has been applied for. We recommend you get an expert to do this if your budget permits.

Before a trade mark can be considered for registration under the Trade Marks Act, certain prerequisites must be met.

Firstly, the trade mark must be distinctive. This means that the trade mark can satisfactorily function as a badge of recognition in the marketplace as identifying, as well as being associated with, a particular product, service or business.

Trade marks which are descriptive or which convey the description of the character or quality of the goods or services are usually very difficult to register. Therefore, if the Trade Marks Office considers that a trade mark is not capable of distinguishing the goods and services of the Applicant, the trade mark will be rejected.

If the trade mark is not distinctive and is descriptive then you will be requested to provide sufficient Evidence of Use to overcome the fact you brand name is descriptive. I had a client who’s revenue was close to $21 million – with some examples of use and that sort of revenue, it was enough to convince the Trade Marks Officer in Canberra that the public associated that name with my client’s company and that it was a trade mark which should be accepted for registration.

If you have been using a descriptive name and you’ve just started out, you may need to consider re-branding before the cost to re-brand gets too high and the risk of a non-registered trade mark is too risky. If you’re not sure give me a call and we can discuss.