Category Archives: Trademark Information

Not Applying for a Trademark Spells Disaster for Your Business

Category: Trademark Information

This story might be familiar to you. An aspiring businessman sets up his own venture. He spends hours deciding on a business name, which he registers at the Australian Securities and Investments Commission and puts it on all his products. All seems to go well but a few months later, a lawyer reaches out to him and tells him he has no right to use his business name. Turns out, the business name is trademarked by another business. The mishap led them to court, and the man lost the business he’s worked so hard for.

A lot of people are like this businessman. They believe that once they’ve registered their business name, everything would sail smoothly. But there’s a world of difference between a business name and a trademark. This is what Pinnacle TMS strives to educate our clients about —applying for a trademark could mean either success and shut down for your business.

Business Name vs. Trademark

Business names are required in running a venture in Australia if you are not using your own name, but registering one doesn’t give you exclusive rights to use it.

A trademark, on the other hand, is a legally protected word, phrase, shape, logo, and more, which helps people identify your product or service. It gives you the exclusive rights to use and sell the mark.

There are two possible consequences if you do not apply for a trademark for your business name. First, the party that owns the trademark of your business name can take legal action against you. Second, you have no legal power to stop anyone from using your business name.

Legal Actions Against the Use of a Trademark

When you use a business’ trademark without authorisation, you are infringing on another’s rights. It could be deemed as an unlawful act.

In some cases, the aggrieved party sends you a cease and desist letter. This is a legally enforceable order that directs you to stop using the trademarked name and remove it from your products and services. You need to change your name and start from square one.

If you ignore this, the aggrieved party could commence legal proceedings whch could mean you could end up in Court.  If they win, not only would you have to stop using the trademark, but the aggrieved party could also seek compensation in the form of damages. If the infringement is determined to be a crime, the court could order a six figure fine or jail sentences.

This is graver when small businesses are involved. Huge and established brands have the money and resources to defend themselves from allegations and go for a quiet settlement. Small enterprises might not be as fortunate.

Businesses with Similar Names

Without a trademark, it is difficult and expensive to stop a competitor from using your business name. This is detrimental to your business. Not only can businesses with the same name compete with you, but customers could also think they’re affiliated with your brand.

There are ways to protect an unregistered trademark, though. If your business name (an unregistered trademark) has built a significant reputational value, the businesses who use it might be accused of passing off as your business.

These accusations may be difficult to prove, however. The best way to protect your intellectual property and save yourself from the significant defence is to apply for a trademark registration.

Register Your Trademark

With so much at stake, it’s imperative that you register your trademark as soon as possible.  The cost to register your trade mark vs the amount you would need to spend in legal and possibly court fees  is significantly less.     The protection trade mark registration guarantees security for your business in the long run. It’s a business asset and a worthy investment.

Contact our experts to help you apply for a trademark.

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.

How Apple Protects Its New Products and Brands with Trademarking Tactics

Category: Trademark Information

Every time Apple announces a new product to its range, it becomes a massive hit that instantly goes viral on the web. Behind the scenes, there is more to the big announcement than a product release. Being one of the world’s most powerful tech giants, Apple understands that with great product comes great responsibility to protect against infringement.

Apple Trademarks Products Before Their Release

The Apple Park in Cupertino, California was opened to the public on November 17, 2017. Apple’s “spaceship” headquarters have a designated Visitor Center that offers limited edition Apple-branded merchandise not sold at Apple stores.

Many of the tote bags, shirts and other items feature the concentric circular architecture of the Apple Park, which Apple is currently working on trademarking in America.

According to online publication Patently Apple, the trademark application for the limited edition merchandise specifically sought to protect the concentric circular design of the Apple Park with the bitten apple and the word ‘Park’ beside it.

However, Apple listed broad usages of the design covered in the trademark:

  • for retail store services and product demonstrations provided inside the store; and for arrangements of commercial, trade and business affairs
  • for education services such as lectures, workshops and seminars in the field of information technology, web design, music, photography and other related subjects
  • for restaurant services

Leaving No Traces of Clues

Apple uses a trademark method to establish claim over its products prior to their public announcement. The tech giant files for a trademark in another country with a system that does not have access to an online database. This way, rivals would have a hard time searching trademark offices around the world for clues.

Applying for a trademark in other countries is taking advantage of a rule in the US Trademark Act. Section 44(d) allows businesses to register a trademark in one country prior to filing for the application in the US. Among the 177 countries that comply with the US trademark laws, 66 have no existing online trademark databases.

Apple filed for the trademark at The Jamaica Intellectual Property Office, which conducts manual searches. Their searches are free, but securing a physical copy of the trademark application costs 150 Jamaican Dollars (JMD) per page.

Protecting Upcoming Projects

Apple did a similar move when the company made updates to the Apple TV trademark. Both fans and competitors assume that the trademark update hints at Apple’s venture into gaming, seeing that the application exclusively covers video game consoles, controllers, video output game machines and other related products.

The tech company did the same thing with their Siri-powered speaker, but instead of enlisting the help of Jamaica, Apple headed to Liechtenstein. It was not until the product was unveiled — the HomePod – that the world heard of the product’s name.

What Apple did is just one of several tactics companies do to protect their brands from copyright infringement and other illegal activities.

Trademark Specialist in Australia

To learn more about trademark applications in Australia, Suzanne Harrington is an expert in the field. She is the owner of Pinnacle TMS Pty Limited, a company that provides high-quality trademark services to small to medium-sized businesses. With over 20 years of experience, Suzanne was able to compile her knowledge into a #1 Amazon best-selling book ‘Trademarking Your Business.’  Here is the link to the book if you want answers to your general trademark questions

For more information and for any enquiries, feel free to contact +61 2 9529 4366 for a complimentary 10 minute phone consultation.