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Business Name vs. Trademark: What Does Each Protect?

Business Name vs. Trademark: What Does Each Protect?

Category: Trademark Information

A business is nothing without its name. Your brand name is what your customers know you by and what differentiates you from others in your industry. However, with millions of businesses, big and small, around the world, it’s not uncommon for one brand to have the same name as another.

While businesses with the same name can coexist without any fuss, especially if they’re operating in different fields and locations, problems may arise if one of them is big or popular. Such was the case that American fast food chain McDonald’s won against MacCoffee, a top coffee brand in the Middle East and Russia with distributions in Asia and the U.S.

Cases such as this prove why it’s essential for businesses to learn about brand names and trademarks. Understanding them can help you better protect the name of your brand and, ultimately, the success of your business.

Registering a Business Name

A business name is the name you use commercially. If you trade under a name different to your personal name, then you need to register that business name under which you will be trading.  This is so the Government knows who is behind a name.    It’s what the public knows you by, what differentiates you from others and you use to promote your goods or services.   It can also be a brand name which can be registered as a trade mark.

So when starting a business, you need to register the name with the National Business Names Register, which the Australian Securities and Investments Commission (ASIC) manages. To avoid complications before you even launch, you can go to ASIC’s business name register and look up the name you want to use. This helps you determine whether your preferred business name has already been registered by another organisation.

Although you can register a business name, that registration does not give you ownership of the name.   This means you can’t prevent another business from operating under a very similar name. This is where trademark registration serves its purpose.

Registering for a Trademark

The best way to protect your business name is to register it as a trademark. When your business name is trademarked, you have exclusive legal rights to its use and can take steps to avoid business name identity theft by a competitor.  Apart from your business name, you can also trademark the names of your products or services, assuming that they haven’t already been registered as a trademark. What’s more, you can—and should—trademark your logo. Trademarking your logo, which includes the fonts and colours you use, not only protects it from being used by other organisations, it also protects you from infringing upon an existing and already-trademarked logo.

Let’s say your planned design has a checkmark that looks suspiciously close to Nike’s Swoosh. If you try to use it in business in the same business field, the athletic apparel company may sue you.

In the same vein, if some company uses a logo similar to your trademarked one, you may stop them from doing so, given that you registered that logo for trademark first and that you’re consistently using that trademarked logo. If the other party can prove that your trademark isn’t being used, they may file for a removal application on the basis of non-use. This means your registration can be removed from the trademark Register and you lose rights to your trademarked  name and or logo.

Protect Your Business with a Trademark Now

It’s not easy to build a business from the ground up, run it and establish its reputation. That is why you must protect it at all cost. With a trademark registration, you’ll have the protection you need—and Pinnacle TMS can help. We’re one of Australia’s leading Trademark Specialists, dedicated to helping you register and manage your trademark. Contact us on +61 2 9520 4366 today for assistance.

Opposing a Trademark Application

Category: Trademark Information

With so many entrepreneurs today trying to establish their own businesses, protecting your own has never been more important. Aside from your business’ assets, employees and services, there is one intangible asset that businesses should protect:  intellectual property.

There are three types of intellectual property protection for businesses, including trademarks, patents and copyrights.  These protect a business’ ideas, concepts and overall branding.

Trademarks exist to give you exclusive rights to your company’s overall brand representation, from your name, logo and tagline which help your business to stand out and re-enforce your corporate identity.

Protecting your business with trade marks

Aside from helping you establish a strong brand, when you trademark your business’ logo or other unique elements, competitors will not be able to use them to piggyback on your success or outright mislead customers. Businesses, no matter what size, should not overlook trademarks as one of the most important steps in securing their brands.

However, registering for trademark is only the start of the continuous process of protecting your brand. As a business and trademark owner, regular monitoring of the market for potential infringement should be prioritised.

How to Oppose Trademark Applications

An opposition is a formal complaint to a trademark application. While this can be a costly and complicated process, it’s an effective and crucial way to safeguard the brand you worked hard creating. Regular checking of the Australian Trademarks Register and Official Journal of Trademarks is one way to monitor trademark applications.

If you see an application for a trademark that is significantly similar to yours, you can start the opposition process by filing a notice with IP Australia. This step comes with a fee which needs to be paid within two months.

After filing the notice, you need to file a statement of grounds and particulars. This is where you specify the legal grounds for opposing the trade mark. The grounds and particulars of your opposition must refer to the Trade Marks Act 1995. Failing to file a statement of grounds and particulars within one month of filing the notice will let the application proceed unopposed to registration. In some cases, the other party will counter your opposition by filing a notice of intention to defend.

After filing the grounds of your opposition, declaring evidence is a crucial part of the process. You must file the evidence to IP Australia not later than three months after receiving the applicant’s notice to defend. The evidence you provide shall support the grounds you declared for opposing. It should be relevant to each ground as this will establish the validity of your opposition. If you do not file any or adequate evidence, the defendant will be notified.

The last possible step of the process is requesting a hearing after the exchange of evidence. After both parties submit statements of support, the hearing officer will make a decision.

Pinnacle TMS understands all aspects of trademarking and understand the importance of protecting you trade marks.  We will refer our clients to industry leading legal teams who can assist you with the opposition process.

A trademark is your business’ property and Pinnacle TMS is here to help. As one of the leading Trademark Specialists in Australia, we try to minimize your risk of having your application opposed and having to incur the costs of defending your brand.   We can also manage your trade mark portfolio to provide a consistent approach to your branding worldwide.

Call us on +61 2 9520 4366 and let us help you register and manage your trade marks so you can have peace of mind to grow your business.  If you would like more information, our videos on our website can help.

Do Trademark Laws Apply to Google AdWords?

Category: Trademark Information

Can the use of trademarked terms on Google AdWords be considered a trademark infringement?

The debate is heated once again with the Catch Group’s complaint against Kogan over the latter’s use of the word “catch” on AdWords.

In May, online retailer Catch Group filed a complaint against its fellow online retailer Kogan on its use of the word “catch” on Google AdWords to drive traffic to their site.

Catch Group’s claim read that searching the keywords ‘catch connect’, ‘catch mobile’ and ‘catch mobile plans’ would yield sponsored links to Kogan’s sponsored domain the Catch also alleged that Kogan was trying to pass off its products to be related to their group as the latter registered other products with the domain names and

Catch further claims that Kogan contravened the Australian Consumer Law for misrepresenting that the two companies are related or that the products of Kogan are also Catch products.

Catch is seeking damages for the alleged violations and seeks to require Kogan to cancel its domains.

We are yet to learn the court’s verdict but the Catch vs Kogan case is similar to the Veda Advantage Limited vs Malouf Group Enterprises lawsuit.

Veda Advantage Limited vs Malouf Group Enterprises

In 2016, Veda Advantage Limited filed a case against Malouf Group Enterprises for using VEDA Advantage’s trademarks in their AdWords advertising.

Initially, the court stated that Malouf Group was not guilty of trademark infringement because they used the keywords to describe the services offered rather than use them as a trademark. However, there were instances when Malouf Group used headings such as ‘The Veda Report Centre’. The court found that the use of Veda’s trademark was no longer geared towards describing products but to mislead consumers into thinking that Malouf Group was connected with Veda.

For the second category, Malouf Group was found guilty of infringing Veda Advantage’s trademarks.

Laws are still being developed around the use of Google AdWords. Meanwhile, the Veda vs Malouf case remains to be a useful framework for businesses using AdWords.

What can businesses do to prevent this from happening to them?

Despite the complexities of Google AdWords policies and our existing laws, the best way to protect your trademarks is to have them registered.

Google AdWord’s policy has changed where trademark owners can submit a dissatisfaction notice if someone uses their trademark in an ad’s text. Google will privately look into the matter and restrict the use of the trademark if the site is not a reseller or informational site.

Should you need to go to court, provisions from the Trademarks Act and Australian Consumer Law will also give your business varying layers of protection.

Registering a trademark may be challenging, but we can guide you through the process. With over 20 years of experience in helping business owners with trademark registration, you can rely on us to help you secure the protection your business deserves, both in Australia and overseas.

Contact us today on +61 2 9520 4366 for a 10-minute complimentary consultation about the trademark application process in Australia. You can also reach us at for other enquiries.

6 Trademark Mistakes Startups Should Avoid

Category: Trademark Information

While a company’s success is anchored to the quality of its products and services, the success of a brand is inextricably tied to its identity. A brand is a name, an image, a set of identifying features that define the nature of a business and the kind of services it offers. It has to be distinct and easily identifiable.

The impetus to carve out a distinct identity is even greater on startups, who face an uphill battle at the outset. While most startups can settle on a brand name with minimal difficulty, others may accidentally select a brand name that is already in use and/or registered as a trade mark. When that happens, the legal consequences are often disastrous, especially if the startup in question has already built up a reputation and spent considerable funds building that reputation.

It is crucial for a startup to trademark its brand name, to protect its identity and avoid future infringement issues. The process can be very complicated and it is critical to get the details right at filing, so brand owners have to exercise caution. Here are some common trademark mistakes startups make:

Trademarking overly generic brand descriptors

A business needs to safeguard its most identifiable aspects. For example, ‘Lay’s ® Original Potato Chips’ has only trademarked the brand name ‘Lay’s’, and not the entire descriptor, as the phrase ‘original potato chips’ can apply to numerous other brands.

One mistake startups often make is trademarking overly generic brand descriptors. Many trademark experts agree that non-distinctive descriptors are weak and will not hold up in intellectual property court. Startups increase their chances of obtaining a trademark by registering a unique, original word/words  and/or logo that communicate the brand identity immediately.

Additionally, brands that use geographic indicators in their product names, such as ‘Feta cheese’ or ‘Parma ham’, may face legal issues when trading with European Union nations, as the EU imposes strict regulations on such names. To be safe, analysts recommend dropping or minimising the use of geographic indicators.

Assuming that having the ™ symbol is sufficient to protect the brand name 

The difference between the ™ and ® symbols is that the latter refers to a successfully registered trademark, while the former merely signals an owner’s intent to trademark a brand in the future. The ™ symbol is a means to claim ownership of a brand name, but it does not guarantee protection. The safest way is to register the trademark and obtain the right to use the ® symbol.

Failing to assign trademark ownership properly

It matters in whose name the trademark is registered. Is it in the business owner’s name, a company name or a trust?   Straightening out trademark ownership from the beginning is crucial, as it will decide who receives payment should the trademark be sold in the future.

Assuming that the trademark protects all goods or services 

While trademark registrations do protect a company’s products and/or services, they only hold force within a specific class of goods and/or services. A company trademarking its cleaning products’ name, for example, cannot block that the same name being registered by a mobile phone company.

It is important to strategically review the product lineup and register products or services early on, to avoid potential public confusion with similarly named brands.   Remember, once an application is filed, the scope of the coverage of goods/services cannot be widened.

Pinnacle TMS is ready to help. Contact us today at +61 2 9520 4366 for a 10 minute complimentary consultation about trademarking your brand in Australia or overseas. You can also reach us at for other enquiries.

Of course Suzanne’s Amazon #1 Best Selling Book ‘Trademarking Your Business’ answers 10 common trade mark questions.   It is a short easy to read book and at $3.99 won’t break the budget!

What the Free Trade with EU Means for Businesses in Australia

Category: Trademark Information

The impetus for the European Union and Australia to enter a free trade agreement (FTA) returns amidst Britain’s exit from the EU and the US’ pending negotiations with the EU on steel tariffs. The FTA is expected to boost both economies by $15 billion and will greatly benefit Australia’s service and agri-food industries.

From Prime Minister Malcolm Turnbull’s meeting with European Commission President Jean-Claude Juncker in April, it was announced that the EU leaders will soon vote whether to enter negotiations. To date, German Chancellor Angela Merkel and French President Emmanuel Macron have voiced their support for the EU-AU trade. EU Commission President Juncker has also committed to finalising the agreement within 18 months.

The Catch

European farmers, particularly farmers from France and Italy, are anxious about the import of Australian beef and Australian producers’ use of ‘geographical indicators’ such as ‘parmesan’ and ‘feta’ for their products.

Cecilia Malmstrom, The EU’s lead trade negotiator, warns that European farmers expect Australian producers to accede to discontinue using geographic identifiers in their food labels.

As for European farmer’s concern about the Australian beef import, Malmstrom believes that the unease is manageable as Australia’s trade with Asian countries greatly depletes the amount of Australian beef that will reach Europe.

This leaves Australian producers with the concern, however, that they might have to remove iconic terms in their hams, wines and cheese labels.

What Should Producers Do?

In the early 2000s, when the EU was introducing strict limitations on using the word ‘feta’, the award-winning family enterprise Meredith Dairy made a pre-emptive call and stopped labelling their goat cheese products as feta.

So as not to lose their brand’s level of popularity, they transitioned into completely removing the word ‘feta’ from their label. For a time, the company placed two names on their labels so that the consumers would still recognise their brand.

When interviewed by The Age regarding the company’s move, Meredith Dairy founder Julie Cameron stated they thought it was inevitable for the company to use the word feta so they chose to re-label their products to ensure brand longevity.

With the expected approval of the EU-AU FTA, dairy, ham and wine producers are likely to consider doing similar changes for their products to enter the European market.

How Pinnacle Can Help

Entering a free trade agreement has its pros and cons. Apart from the strong possibility that producers will be pressured to discontinue use of ‘geographic identifiers’, the increased number of competition also strengthens the need for protecting intellectual property rights.

With years of experience in all aspects of trademark registration, Pinnacle TMS can help. We’ve helped businesses protect their brands both locally and overseas with a range of trademark services.

Our owner Suzanne Harrington has worked with overseas trademark attorneys to help businesses secure global trademark registrations.

Providing our clients with an Initial Protection Review and Strategy Report – a report unique to Pinnacle TMS – we help businesses determine if their mark is not yet registered by other parties, saving significant time and money.

For unbiased and professional help from true Trademark Specialists, book a consultation today.