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Restaurant and Caterers | Trade Marks - Brand Protection

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Trade Marks | Protecting Your Business’ Brand Identity in the Food and Wine Industry

JULY 2018 | by Jenny Paglia

  • Trade mark registration is essential for maximising your legal rights in relation to protection of your brand and how consumers recognise your brand.
  • Before you embark on the process of applying for registration it is important for you to obtain advice to ensure the accuracy of details submitted on your application/s including those relating to applicant and classes of goods and services.
  • We can assist you by advising on an effective trade mark strategy for your business with the aim of protecting your brand ensuring potential issues are flagged in advance and strategies for overcoming them are discussed.

Protection of branding is becoming increasingly important in the food and wine industry.

You don't want to find yourself in a situation where you have just started a distillery or micro- brewery or alternatively; you have been operating a restaurant or hotel for years, only to discover that another business has registered a trade mark for the same or similar branding to your own for the same or similar goods and/or services you provide.

The risk of not protecting your business and related branding through trade mark registration, as early as possible, is that others may copy your idea and proceed to obtain legal protection. They can then reap the benefit of the goodwill you have built up. You might then find yourself in a similar situation to Taco Bill who had been trading for decades in Sydney only to have Taco Bell enter the market and register their brand for protection prior to Taco Bill. Taco Bill was then involved in 4 years of legal proceedings. If Taco Bill had obtained trade mark protection for its branding in the early stages of its business it could have exercised its exclusive intellectual property (IP) rights to prevent Taco Bell operating anywhere in Australia.

The risk of not doing your homework in the early stages of operating your business to see what branding is protected in your industry, is that you could end up infringing another business's IP rights. This could also lead to wasted expense on design and marketing that may never be used as a result, as well as the added expense of rebranding once these obstacles are identified.

Obtaining legal advice in relation to protecting your brand can ensure that any obstacles are identified, addressed and strategies to protect your businesses IP can be established.

So what is a trade mark?

A trade mark is a way of identifying where a product or service comes from and distinguishes your business from other traders. It helps your customers discern the quality of your goods or services over that of your competitors.

Why register a trade mark and what does a trade mark protect? 

The purpose of registering a trade mark is to protect your business's brand in the marketplace.

Registering a trade mark in Australia helps you protect your brand nation-wide. It also offers you exclusive enforceable legal rights and can be a powerful tool in identifying and promoting the goods and services offered by your business.

As your business grows, ensuring you have IP rights relating to your business (e.g. legal rights in relation to your branding) becomes more important as the value of your business will increasingly align with the growth in profile of your business in the marketplace.

Do your homework

If you are just starting a business, choosing a name and brand is one of the most important decisions you will make. Ideally you want a brand that distinguishes your business from competitors and is neither too descriptive nor too similar to another brand.

If you are an established business, and your name and brand is already in existence and known in the marketplace there are other matters that need to be considered when making the decision to protect your brand.

In either situation, we can assist by providing advice on factors to take into account when deciding on your branding and its protection. This includes conducting searches of existing trade marks to give you some clarity and options around whether the chosen brand is/is not already taken or protected.

Applying to register a trade mark

Once you have made the decision to protect your branding by applying to register a trade mark, the next step is to decide on the type of mark to apply for.

Business names and logos are registered as separate trade marks.

Applying to register a business name or brand name as a trade mark is called a 'word mark'. A word mark protects the words and gives the registered owner exclusive rights to use the words regarding its business and similar businesses.

Applying to register an image or graphic only or a combination of a graphic and at least one word is called an 'image mark'. An image mark protects the overall impression of the image including the shape, font and style however any words contained in that image mark do not receive individual protection.

Word marks can be more difficult to register than image marks due to conflicts with currently registered marks or because IP Australia considers the words are not inherently distinctive.

Image marks can be easier to register as there are many ways to present a mark to make it distinctive; however this can provide less protection for the brand name itself as the words are not specifically protected.

Trade Mark Headstart Request

Once you have decided on the trade mark/s you want to apply for, we recommend lodging a 'TM Headstart Request' with IP Australia. This service allows potential applicants to understand what issues may arise before committing to a formal application, without there being any record on the register of trade marks.

IP Australia responds with a report within 5 business days of the request being lodged. Once that report is received you have 5 business days to convert the request into a formal application for registration. If you do not convert the request it then lapses and no further action is necessary.

Formal application

If you proceed to a formal application, the minimum time from application to completed registration is 
7.5 months as a result of IP Australia's international obligations.

Protection of the priority of your mark commences from the date that your request is converted to a formal application. That priority is only lost if the application is rejected or lapses.

There are many stages during the process when you can decide not to proceed (such as responding to objections from IP Australia Examiners or other mark holders).

If IP Australia accepts the trade mark application and passes examination, it will then issue a Notice of Acceptance.

Your trade mark is then advertised in the Australian Official Journal of Trade Marks to give the public the chance to oppose registration during the 2 months from the date of advertisement.

If there is no opposition to your trade mark, and registration fees are paid, you then receive your Certificate of Registration. Registration of your trade mark is for 10 years.

Telephone Advice Line

Wallmans Lawyers – Preferred Legal Services Provider

Wallmans Lawyers specialise in Intellectual Property Law and Trade Marks. As Gold Partners of R&CSA we offer a free telephone advice line to discuss queries such as protecting your brand, registration of business name and trade mark application matters. 

Please call (08) 8235 3025 to speak to one of our practitioners, or feel free to discuss your issue with your R&CSA Membership Manager to be referred to a practitioner.

Disclaimer

The content of this newsletter is for general information purposes only and should in no way be treated as formal legal advice.