Category Archives: Trademark Information

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.  www.pinnacletms.com.au

Loss of Trademark Rights: Causes and Prevention Tips

Category: Trademark Information

Many people think that a trademark is nothing more than a symbol attached to a brand. Contrary to popular belief, a trademark isn’t just a logo. It can be a letter, a phrase, a sound, a photo, an aspect of packaging or a combination of those different aspects. Trademarks exist to give you exclusive rights to your intellectual property, making it easier for you to stop others from using it and profiting off your hard work. They also increase the value of your brand to potential customers and protect your business from infringement claims.

Is it possible to lose my trademark?

According to Trade Mark Law, you must use your trademark actively or else it can be removed on the grounds of non-use by an interested third party. This is to discourage traders from registering multiple trademarks for the sole reason of preventing others from using them.

Aside from lack of use or abandonment, here are two common ways that you can lose your trademark:

  • A trademark that’s too generic – An overly generic trademark is when the mark is no longer inherently distinctive and cannot be identified exclusively with the product or brand in question. A trademark’s distinctiveness allows consumers to identify the product’s source, as against generic terms that merely describe the product being sold. For instance, there are certain brand words that were not initially generic but lost their trademark when the general public began to use the trademarked words to describe the product or service, in general. Common examples include Band-Aid, Aspirin and Yo-Yo, which at some point all became synonymous with the product at large rather than the brand itself.
  • Infringement by another person or company – Trademark infringement is the reproduction or unauthorised use of a trademark. For instance, some clothing manufacturers attach brand labels to generic products and attempt to pass them off as authentic.

If someone else uses your trademark without your permission and you do not try to stop them, the courts may infer that you do not own the rights to the trademark. You lose the right to sue for that specific instance of trademark infringement.

What can I do to prevent the loss of my trademark rights?

The most effective way to prevent your trademark from becoming generic is to prevent any misuse of the trademark by competitors and to stay informed of the use of your trademark by others. The same goes for trademark infringement. This may include suing competitors who use your trademark to describe their products.   The onus is on the trademark owner to monitor its brand to enable you to take action where required.

If your trademark registration is about to expire, it’s important to renew that registration in a timely way. As previously mentioned in our article about trademark renewal, registered trademarks are only valid for 10 years in Australia. Renewing your trademark will keep your business protected under the law and prevent competitors from profiting off your hard work.

Protect Your Business with Pinnacle TMS

Businesses with registered trademarks need to protect their intellectual property from opportunists. Find out how Pinnacle TMS can help you with your trademark application, renewal and other trademark requirements by calling us on +61 2 9520 4366. You can also send an email to info@pinnacletms.com.au.

As one of the leading trademark specialists in Australia, we take the headache out of protecting your trademarks and help you avoid brand name identity theft.

How Three Big Brands Lost Their Trademarks

Category: Trademark Information

To a world-famous brand, few things are more important than a trademark. Trademarking a name, symbol or logo identifies your ownership of your products and protects your intellectual property. But there are instances in which big companies can lose their bids to trademark iconic parts of their branding. Here are three such instances.

Adidas’ Three Stripe Symbol

Adidas is well-known for their slanted, three-striped logo. However, an EU court ruled on June 2019 that it was not “distinctive” enough. According to the ruling, Adidas did not “prove that the mark has acquired, throughout the territory of the EU, distinctive character following the use which had been made of it”.

The ruling is just the most recent update in a long-running trademark dispute between Adidas and Shoe Branding Europe BVBA, a Belgian company that features two slanted stripes on its shoes.

The dispute started in 2014, when Adidas was granted a trademark on “three parallel equidistant stripes of identical width, applied on the product in any direction” on their apparel. However, in 2016, Shoe Branding Europe BVBA applied to the EU Intellectual Property Office (EUIPO) for this trademark to be withdrawn. EUIPO annulled the 2014 trademark on the grounds that it was devoid of any distinctive character and should not have been registered in the first place.

This new ruling isn’t expected to affect Adidas that much, though. As Adidas has said in a statement, “This ruling is limited to this particular execution of the three-stripe mark and does not impact on the broad scope of protection that Adidas has on its well-known three-stripe mark in various forms in Europe”. Adidas can still appeal this decision.

Cadbury’s Purple Packaging

Since 1995, Cadbury has claimed the rights to the colour purple – particularly Pantone 2685C – but now, in 2019, following a long-running legal battle to protect the distinctive shade, its parent company Mondelēz International has given up its trademark.

The original 1995 application said, “The mark consists of the colour purple (Pantone 2685C) as shown on the form of the application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods.”

The 1995 trademark was only registered for “chocolate in bar and tablet form”, so, in 2004, when the company wanted their line of drinking chocolates, cakes and broader chocolate range to also use the colour purple, they applied for a new trademark. This new trademark used the same description as the 1995 one.

Nestle, their main competitor, opposed this application, arguing that the particular shade of purple had no distinctive character. The UK Court of Appeal agreed with Nestle and rejected Cadbury’s application in 2013. The Court’s decision hinged on the wording of the application, particularly the usage of the word “predominant”, which they felt was too broad.

After the decision, Cadbury realised that its existing 1995 UK registration became vulnerable to invalidation since it used the same wording as the 2004 application. They returned to court in 2018, appealing to remove the application’s second mark which used the term “predominant”. They lost the case since the Court refused to accept that Cadbury’s registration was for a series of two different marks.

This loss placed Cadbury’s trademark in an uncertain position. The company had two options: drop the trademark or apply for a fresh one. They decided to drop it. Still, they will continue to protect what they believe is a distinctive trademark, using unregistered rights.

KitKat’s Four-Finger Shape

Since 2002, KitKat maker Nestle has been trying to establish a European trademark for their four-finger shaped chocolate bar. Unfortunately, in 2018, the European Court of Justice in Luxembourg ruled that KitKat’s shape is not distinctive enough to be trademarked.

The court sided with the makers of Kvikk Lunsj, a Norwegian chocolate bar that is shaped almost exactly like the KitKat bar. Due to this, its maker, Mondelēz International, can market and sell the Kvikk Lunsj brand more widely throughout the EU. The chocolate bar first hit the shelves two years after the KitKat did in 1935.

This decision is the latest in the decade-long legal battle between Nestle and Mondelēz International, which began when, in 2006, Nestle managed to secure a trademark for KitKat’s shape. Kvikk Lunsj’s then-maker, Cadbury (now owned by Mondelēz International) challenged this trademark, and in 2016, Nestle was stripped of it. Nestle appealed this decision, but was rejected in 2018.

Nestle vows to keep fighting to secure their trademark. They plan to ask the appeals board to re-examine the evidence.


Big brands are not immune to issues with their trademarks. If you’re having problems with registering your trademarks, you can rely Pinnacle TMS to help. We are Australian trademark specialists. Book your today complimentary consultation to find out how we can assist you.

Bega and Kraft Battle Over Peanut Butter Packaging

Category: Trademark Information

A long-running legal battle over peanut butter jars has finally ended, with Australian food brand Bega Cheese prevailing over U.S. food giant Kraft Heinz. Bega Cheese now has exclusive rights to use the trademarked yellow label and lid with a blue or red peanut design, depending on the variant of peanut butter.

In a statement to the ASX (Australian Securities Exchange), Bega Cheese said that it was pleased with the decision, which ruled that Kraft Heinz’s use of similar-looking packaging is misleading or deceptive under Australian law.

“We look forward to continuing to produce and supply our customers with our much-loved peanut butter products,” the statement further said. However, the matter’s not over yet, with the court having to determine further orders and damages at a later date. Even so, the whole affair took almost 18 months to resolve. How did this peanut butter battle begin, in the first place?

Origins of the Legal Battle

Back in 2012, Australia’s Kraft peanut butter was owned by the U.S. food company Kraft. When the company split in two, it transferred its Australian operations to a new firm called Mondelez International.

In 2017, Australian-owned Bega bought most of Mondelez International’s Australia and New Zealand grocery and cheese business. The acquisition cost the Australian brand $460 million and consisted of ownership of Kraft-branded products, such as cheeses, mayonnaise, Vegemite and, yes, peanut butter. This included recipes and trade dress (an important identifier of a product, operating like a trademark).

Since the Kraft name wasn’t part of the acquisition, Bega Cheese simply replaced it with their own on the distinctive yellow jars. They also ran ads where they stated that “Kraft peanut butter is now Bega peanut butter” and “Never oily, never dry, with the same taste you’ve always loved and now is Aussie owned by Bega.”

This didn’t sit right with Kraft – now Kraft Heinz – who wanted to return to the Australian market and use their famous yellow jars exclusively. In 2017, they took Bega Cheese to court on trademark infringement allegations, first in New York then in Australia, arguing that the peanut butter trade dress wasn’t part of the acquisition.

Kraft alleged that Bega’s usage of the unique yellow jars was a “deliberate effort to trade off the goodwill of the Kraft brand, cause consumer confusion and irreparably harm the value of Kraft’s intellectual property”. They demanded that Bega drop the famous packaging – but Bega maintained that it now owns the brand’s intellectual property. They filed a crossclaim against Kraft over their re-entry into the peanut butter market.

While the cases were going on, Kraft cooked up a brand-new peanut butter formulation and, in 2018, began selling it in almost identical yellow-labelled jars. At the same time, Bega simply continued producing the original Kraft “never oily, never dry” recipe under the name Bega peanut butter.

Before the decision was made, both brands had the same look. Now, though, Kraft Heinz will have to redesign their peanut butter jars, since the court ruled that Bega Cheese acquired “all rights” to the peanut butter trade dress when it acquired Mondelez International. They had bought the trade dress fairly and squarely.

As a result, Bega Cheese is now exclusively entitled to the rights of “a jar with a yellow lid and a yellow label with a blue or red peanut device, with the jar having a brown appearance when filled.” Meanwhile, Kraft Heinz is “disappointed” and “considering its options.”


Are you looking to trademark something? Let Pinnacle TMS help. We are Australian trademark specialists who will keep your business brand safe from trademark infringements and more. Get in touch with us today and get a phone call consultation.