A good trademark can make the registration process easier and ensures good brand recognition, leading to better protection.
What makes a 'good' trademark?
A good trademark will typically be:
easy to recognise;
easy to protect; and
a good ambassador for the goods or services you sell.
Does a good mark make registration easier?
The more distinctive and unique your mark is, the easier the process of registration is likely to be.
A distinctive mark will also be a better ambassador for your goods and services than a more generic choice, as it will be more easily recognised by your customers.
Your mark carries the value of your brand. The more that it stands out from the crowd, the easier it is to create value, by building up reputation and goodwill in your brand.
And, the easier it is to register, the easier it is to protect the value you’ve created in that brand.
Before you use and file an application to register the mark, here are several essential tips to consider.
How to create and register a good trademark
1. Make sure it is unique
Before you apply to register a mark, make sure that is is recognisable and unique. This will help your brand stand out and can make the registration process much easier.
Although it can be somewhat difficult to come up with a mark which is truly unique, it is worth putting in the effort.
Search the internet and the TM register before you use or apply register a trademark
You should search the web and the Australian TM register for similar marks before you commit to using or registering your chosen mark.
If you need a hand, we can help with trademark searches and advice.
The value of unique marks
They can be easier to find
A unique mark is invaluable, particularly in the age of information and search engine optimisation.
Ask yourself, do you really want your customers trawling through 5 pages of google results because you called your new bowling alley business “Super Bowl“…?
It's easier to build goodwill
Your hard work in building goodwill in your brand will be diluted by the existence of other traders using similar marks - even if they aren’t in the same industry or market as you.
Having a unique trade mark doesn’t require you to create a new word. Many of the most recognisable marks simply use existing words in relation to products or services that have no connection to the ordinary meaning of the word (think Apple, Amazon or Uber).
Other unique marks can simply be unusual or unexpected combinations of words, or parts of words (think Microsoft, Netflix, YouTube, or Facebook).
It can be easier to register
As well as being important for SEO, a unique TM is less likely to run into problems when you go through the registration process.
If someone has beaten you to the punch and registered a similar TM already, you might find that not only you can’t register your mark, but by using your mark, you're infringing the other person's registration.
It is a good idea to check whether the mark is registered or being used before you start using it or go through the TM registration process. You can do this by completing a search and checking the register (more on this below).
We can also help with trademark searches and advice.
2. Make sure your mark is memorable
Your mark needs to be memorable so that your customers remember it well enough to find it on the internet.
What makes a memorable mark ?
A memorable mark is often short and simple - but interesting.
This applies in many, but not all industries (the pharmaceutical industry often uses trade marks which are complex and scientific sounding).
For most businesses, it also helps if your word trade mark is easy to pronounce.
There are other strategies that might be effective for some types of businesses, for example by calling a restaurant "Thai restaurant near me". That might be a good way to search engine drive traffic for a local restaurant. But for most businesses, the best approach will be a unique, memorable mark that they can build value in.
An objection will be raised if you apply to register a descriptive or non-distinctive trademark
A memorable mark is important for customer recognition - but it's important to make sure it is not descriptive and is sufficiently distinctive.
If you apply to register a TM which is descriptive, or not sufficiently distinctive, an objection will be raised by the examiner.
An expert can help you to determine whether your TM is descriptive and distinctive before you apply to register your trademark.
It might be possible to overcome the examiner's objection if you've already been using the TM for a few years and it has "acquired distinctiveness".
But it's better to start with one which is not descriptive and distinguishes your goods and services from others.
3. Complete a search
It is vital that you do some research to check whether another trader is already using something similar.
If you start using a trademark and another trader is already using something similar, or if it is registered already, you may be at risk of infringement. The owner of that registration may be able to bring an action against you.
If you file an application to register a TM that is the same or similar to a prior registration, the prior registration may also stop you from being able to register your TM.
As a first step you should complete a general internet search to see if it is being used (though, online searches are not always fool proof depending on your industry).
You should also search complete a search to look up the registers of any countries in which you may want to use or register a trademark. A trademark lawyer can also help with this.
What to avoid
1. Don’t directly refer to your goods and services
It's tempting to include a reference to the goods and services you provide. However, if your TM is descriptive or not sufficiently distinctive, you will encounter problems when you go through the registration process.
Instead, it should become synonymous with your business through the growth of your business and its reputation, and not by describing the goods and services you sell.
Getting the balance right is tough - using a slightly descriptive mark is tempting but using a too descriptive mark can lead to issues down the track.
Once you've chosen a distinctive and unique trademark, check out our guide on how to choose the right goods and services classes for your trademark application.
2. Don’t include a geographic indication
It is typically quite difficult to register any mark which contains the name of a place, even if there is no obvious connection with the goods and services you are intending to provide under the trademark registration.
For example. if you are thinking of moving to Byron Bay along with the rest of Australia and you want to start selling goods or services, try to resist the urge to reference “Byron Bay”.
We’ve provided 8 out of 176 examples of why below:
3. Don’t use someone else's registration
Try and avoid using competitors as inspiration when you create your trademark.
It can lead to infringement and registration issues.
Solahart (suppliers of solar hot water systems) and Solarhut (supplier of solar panels) found themselves in the Federal Court of Australia because their brands were too similar.
Finding inspiration from your competitor’s brand may not always be deliberate. As you could imagine, there is a high number of solar/sola brands in the solar panel industry. Infringement can be avoided by identifying and avoiding trends that are being used or followed by your competitors.
4. Don’t get attached to a bad one
If you think that you might have a legal issue, it's a good idea to get advice from trademark lawyers. The earlier you get advice, the better.
You need to have an objective look at your TM. Is your connection to your brand causing you to not reflect on the potential downsides of the mark?
Is your choice a bad one, but you just don’t want to face it?
So often businesses have their heart set on a certain mark, only to find out it is taken when they go to register it. Or considering the advice above and find out its simply a bad choice.
Yet their heart (and their wallets) are set on using it and going through the registration process.
Thousands of dollars later, or worse - after an infringement action is brought against them, they have to rebrand.
If, after reading this article, you don’t think your trade mark is up to scratch, it is better to rebrand sooner rather than later.
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*Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.