In Part 2 of a 2 Part Series, Jerry Gomez, Principal at Gomez Partners Lawyers and Consultants, explores the key steps in Brand Registration. The elements of your brand carry your reputation and can only be protected with a comprehensive legal strategy.

Once you have defined you brand, the next key steps include the following:
 

• Business/Domain name registration. These are normally registered as a matter of course by businesses. But you need to go further given that business and domain names registration may not prevent others from registering a similar business name, cybersquatting or typosquatting. 

• Trademark registration. Trademark registration (and subsequent registration) is the strongest form of brand protection. Having a registered trademark gives you ownership of that mark and the exclusive right to use the mark in connection with the goods and services listed in the registration.

• Define it. All the key elements of your brand have to be registered individually and in specific classes. To do so properly, you would need to define your trademarks and correctly prepare applications and documents for lodgement. The process can get complicated if the trademarks office issues an adverse report against registration. This would then require further submissions supporting your registration or even appearances in front of the Registrar of Trademarks.

• Tell the world it’s yours. Do this by using the mark ™ with your trademark while it is pending registration. Upon registration use the mark ® with your trademark. Note that it is an offence for a trader to use the ® sign with an unregistered trade mark.

• Keep to the design. Ensure that registered trademarks are used only in the format in which they have been registered. The slightest change in the use of the trademark may affect its validity. A trademark may also be removed from the trademark register if it becomes a generic term (e.g. Rollerblading and Escalator). To ensure consistency, prepare a set of guidelines for the use of the trademarks by staff and contractors.

• Use it. Trademarks may be removed from the registry for non-use should anyone make such a challenge and succeed. 

• Cease and desist notices. Do not allow the use your brand elements by others to go unchecked. If others use it and can show to the court that the use of those branding elements are commonly used in relation to a category of products and services (rather than being unique to your company’s products and services) then a court may not stop the competitor from using elements of the brand.

• Going international. If you have overseas expansion plans, then ensure that you obtain appropriate rights and protection for the trademarks and other key elements of its brand in each of the new countries.

 
In a competitive environment, the only point of difference between you and your competitor may be your reputation. A failure to take all the necessary steps to protect your brand may allow competitors to trade on your reputation by using elements of your brand. Even worse, a competitor could possibly prevent you from using elements of your brand should they get trademark registration for it before you do. 
 
So ask yourself this: What is your reputation worth?

Gomez Partners Lawyers and Consultants can help you prepare an effective brand protection strategy. For further information please call Jerry Gomez on (03) 9017 6881 or visit their website.

Calibre Business Integration are proud business partners of Gomez Partners Lawyers and Consultants.

Intellectual Property Law is a complex area of Law. The contents of this article cannot be relied on as a substitute for professional legal advice.