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by other traders. A good example is
the McDonalds golden arches; this
is inherently adapted to distinguish
McDonalds’ hamburgers from other
hamburgers.
Marks that utilise common
descriptors such as “good”, “best” or
“amazing quality” or indicate a certain
geographical origin, are generally not
registrable.The issue is that they cannot
have a secondary meaning other than
describing the goods or services of that
business. For example, a business would
likely not be able to formally protect a
mark such as “Brisbane’s most amazing
active wear”, when the business sells
active wear in Brisbane.
The best trade marks are distinctive,
and not descriptive in nature. Invented
names have a greater capacity to
distinguish themselves from those marks
that use or adapt common elements
that may be used by other business’ in
the same, or different, industries, some
examples include Kodak, Sony, iPhone,
ZENOX, Nutrasweet, Zynga etc. It is
recommended that start-ups consider
use of invented words to maximise the
distinctiveness of their brand, and to
maximise the likelihood of obtaining
trade mark registration.
WHYWORRY?
The increase of both international
and national businesses in the sport and
fitness industries means that unique
branding strategies are hard to come by.
Every good and service that we use in
our daily lives is the result of a long and
innovative creative process. Pairing a
quality product, with a quality marketing
strategy is an important tool in creating
a business image. A trade mark is
the face of a business, and when used
effectively, should not create confusion
as to the nature of the good or service.
Ultimately, the best trade marks are
distinctive, and not descriptive in nature.
Most businesses today depend
heavily on internet advertising, social
media, and marketing campaigns
that reach further than the local
neighbourhood shopping centre.
Registered trade marks can assist in
protecting the growth of a business, its
goodwill and overall, its brand. Further,
protected intellectual property rights
may also assist passing due diligence
in business sale negotiations, mergers
& acquisitions or create an attraction
towards forming and entering a joint
venture or partnership.
It is essential that the implications
and impact of not having intellectual
property protection is understood prior
to starting a business, or commencing
production. Businesses are commonly
attracted to the first name that is
chosen in the creative process, and an
undesirable wedding to a favourable
name can lead to branding issues in the
future that can have both significant
time and cost implications. Businesses
should always consider registering
different types of trade marks that may
be valuable including brand names,
logos, taglines, and product names.
Tom Webster and Bill Singleton
Solicitor & Partner
Intellectual Property
Tom is a corporate and commercial
lawyer specialising in brand protection,
intellectual property infringement and
information technology transactions.
Tom is responsible for maintaining the
Brisbane office of HWL Ebsworth’s
trade mark portfolio practice, and often
lends his expertise to other practice
groups when an intellectual property
issue arises. If the content of this article
interested you, please feel free to contact
Tom at twebster@hwle.com.au or on
(07) 3169 4914.
HWL Ebsworth Lawyers has a large
Australia-wide trade mark portfolio,
managed by our team of experienced
intellectual property practitioners. Please
do not hesitate to contact us should you
wish to discuss any of the matters raised
above, relevant to your business.