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Small Business Trade Mark Registration and Intellectual Property Protection
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Appearing on Channel 7 with Kochies Business Builders

Ern Phang / Trade Mark / IP, Kochies Business Builders, LOGO, Phang Legal, trade mark, trade mark registration, trademark, TV, US /

November 28, 2014

If you didn’t see it on TV (who watches TV these days anyway?), I appeared as a guest expert on Kochies Business Builders on Channel 7, 23 November 2014.

If you want to know more about Kochies Business Builders, check out their website by clicking the link below or watch their vide on Youtube:

http://www.kbbtv.com.au/video/trademarking-ip-small-business/

In this segment of the show, I provided advice and tips about brand protection and trade mark registration to a business known as ‘Sweet Connoisseur’, run by Bill and Fiona Penrose. Bill is a pastry chef and has been running his business for over 10 years. In the past, he attempted to register a trade mark but received an opposition from another business overseas because his proposed logo actually copied theirs! Fortunately, Bill was able to resolve those issues without too much hassle.

Skip ahead to the present, Bill and Fiona have once again started to explore their options and have considered registering a trade mark to protect their business brand. That’s where I come in.

At Phang Legal, we assist small business with their brand and trade mark protection is what we do – whether that’s in relation to just providing advice, registering their trade mark, or assisting them in dealing with infringements.

 

Trade Mark Enquiry

For more information on our trade mark services and quotes on our professional fees, please contact us or visit our quoting page. Our experienced trade mark lawyers will contact you to explore how we can improve your business and add to your balance sheet by realising the value in your intellectual property through trade mark registration.

Ern Phang

Ern Phang
Trade Mark Lawyer

Ern Phang is the solicitor director of Phang Legal, an incorporated legal practice based in Parramatta CBD providing professional legal services in trade mark advice, representation and trade mark registration to businesses across Sydney and Australia.

Getting a trade mark that stands out

Kenneth Ti / Trade Mark / trade mark, Trade Marks, US, WORD /

October 16, 2014

Getting a trade mark that stands out is tricky, especially since these days the trend is for something catchy yet simple, something that resonates in the minds of your customers.

But too simple, and you have another problem altogether – that the trade mark may not be considered distinguishable, or worse, may need to be used by the industry that you operate in.

For example – I would be unlikely to be successful in obtaining a trade mark over the brand “Delicious Anzac Biscuits”. Many other businesses in the baking industry would likely need to use that phrase, or a combination of those words, in their marketing campaigns or otherwise – to grant me a trade mark over such a commonly used phrase would not be in the public interest.

Even if you are successful in getting a trade mark that covers a generic term in the industry, that doesn’t mean that your problems go away! First and foremost, you would now have to watch the market and the trade marks register quite carefully to ensure that none of your competitors register or use something similar. Secondly, your registration may not necessarily mean that any of your existing competitors that use a similar mark to yours would stop using that mark! They could very well argue that they were using a similar trade mark before you registered the trade mark, and this could protect them from you.

Therefore it is really important to get a trade mark that stands out above the others, something that is clear and distinctive, but not something that the industry is likely to use. Once you have that, come to us, and we’ll certainly help you register it!

Domain Names and Trade Marks

Kenneth Ti / Trade Mark / Australia, Domain Names, trade mark, trade mark registration, Trade Mark Registrations, Trade Marks, trademark, US /

February 7, 2014

We’ve previously written before about the difference between a trade mark and a business name. Just like a business name though, a domain name registration by itself doesn’t stop another person from using a same or similar name.

A domain name is another name for your website address. For example, our domain name is trademark-lawyer.com.au. In Australia, all domains ending in .au are administered by the .auDA organisation. They set down a number of rules establishing what can be registered, and who can register them. Registration can be done at any authorised domain name registrar.

Not every domain name may be registered, however. An Australian Business Number or an Australian Company Number is required to register a domain name ending in .com.au. In addition to this, the domain name must be connected to the business. There are some other limitation as well, but generally speaking, as previously mentioned, a domain name registration by itself does not prevent a you from stopping a competitor from using that domain name as a trade mark or business name.

We’ve written about trade mark registrations before – as previously mentioned, a trade mark registration grants certain legal rights to the the owner of the trade mark. A registered trade mark can prevent your competitors from trying to register a similar trade mark in a similar field.

It’s worth considering registering your trade mark at the same time that you register your domain name. In addition to this, you can register can register a domain name as a trade mark as well.

If you need any help, we can advise you whether your domain name can be registered as a trade mark.

Is it a good idea to have my name as a Trade Mark?

Kenneth Ti / Trade Mark / Bob Jane, Britney Spears, Federal Court, LOGO, trade mark, Trade Marks, US /

January 8, 2014

Many people, particularly celebrities, have used their names as trade marks.  For instance, the pop star Britney Spears has two trade marks over 8 classes of goods and services, ranging from music CDs  to perfumes.

Arguably having a name trade mark is particularly effective when you’ve built a name for  yourself. That being the case however, what happens when you leave the business and want to do something else?

These circumstances were argued – in a not particularly nice way – in the Bob Jane T-Mart case.  In 2011, Bob Jane had a very nasty spat with the family business, which led to him exiting the family business. He then started up a new tyre business, and used his name in that new business. He even went as far as approaching franchisees to tell them about his new business.

The family company didn’t quite like that. They brought proceedings in the Federal Court trying to stop Bob Jane from doing this. They argued that Bob Jane had allowed his name to become part of the family company’s trade marks, and was well aware of this. Bob Jane argued that he had used his own name in good faith in relation to the new business. The Federal Court didn’t buy it. They considered that the logos that Bob Jane had used and the things that Bob Jane had said was evidence that Bob Jane had used the marks with the intention that consumers would associate their business with the Bob Jane and to leverage off the family company’s reputation.

In the end Bob Jane was ordered by the court to stop using his name (and image) when it came to selling tyres.

Can this apply to you? Well, it might! Even if you want to keep the brand within the family business, if you use your name as a trade mark, you might lose control of your name if you decide to exit the business or transfer the business to your son! It might be better to design your own mark from ground up, rather than use your own name and image as a trade mark.

 

Objecting to a Trade Mark Application

Kenneth Ti / Trade Mark / Australia, IP, Official Journal, trade mark, Trade Marks, Trade Marks Act, US /

December 2, 2013

You are responsible for defending your own trade mark – the government does not do it for you. This does mean that you must keep an eye out at all times on your competitors as well as do some searches from time to time on the online trade mark registry. Some businesses use search agents to regularly scan the registry for similar marks.

When you do find a similar mark to yours being registered by a competitor, you should act quickly. The Trade Marks Act 1995 (Commonwealth) gives a short period of time to lodge an opposition to your competitor’s proposed mark. This is a period of two months from the date the mark was advertised in the Australian Official Journal of Trade Marks. This is a very short period of time – no extensions!

Once submitting a notice of opposition, your competitor is given the opportunity to respond. If your competitor still wants to go ahead with the matter, then IP Australia gives all parties a period of time to put together their arguments and evidence. The matter then gets set down for a hearing before a registrar of trade marks.

If you are going through this process we can certainly assist you in relation to these matters. Time is however, quite short, when it comes to these things, and the sooner you act, the better. Give us a call or e-mail us using the contact us form on our website.

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Recent Posts

  • Honey battle causing quite a buzz
  • Amending a Trade Mark
  • Trade Mark Wars
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  • The Class on Classes

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