Brands, Logos and Intellectual Property – Protecting Your Most Valuable Assets

You may appreciate how precious your company's brand is, but do you know how to protect it? Anna FitzGerald outlines what you need to know to protect your brand and logo.

Your corporate logo is the key element that identifies your brand and distinguishes your goods and services in the marketplace. It provides consumers with an important memorable link to your business, its products, reputation and marketing messages. Your brand or logo helps consumers recognise your products. As your business grows, your brand or logo will become an increasingly valuable asset, which should be protected.

Trademark Protection

Registering a trademark is the best way to protect your brand or logo. You can obtain trademark protection for the elements that distinguish your goods or services in the marketplace. Trademarks may be in the form of letters (FCUK); words (KIT KAT); phrases (JUST DO IT); sounds; shapes; smells; numbers (No. 5 CHANEL), pictures (the Apple computer logo), an aspect of packaging (the Toblerone box) or any combination of the above.

What protection does a trademark give me?

When you apply to register your trademark you must specify within which of the 45 classes of goods or services you wish to gain protection. Your trademark protection will be limited to those classes and will allow you to bring an action against other traders who use a trademark which is deceptively similar, or which is likely to confuse consumers, in the same classes in which you have protection.

Another important issue to consider is that trademark protection is geographic. If you register your trademark in Australia, you will gain protection only within Australia and not in other countries around the world. This is particularly important to bear in mind if you begin trading on the internet. As your brand grows, you may need to consider registering your trademark in other countries around the world.

What is the procedure and how much will it cost me?

IP Australia is the government office that registers trademarks in Australia. You need to complete an application form, specify which classes you wish to gain trademark protection within, provide a description of your goods and services, and provide a specimen copy of your trademark.

The government fees to register one trademark in one class are approximately $450. Your government fees will increase by approximately $410 for each additional class in which you wish to gain protection.

See 'Protect Yourself' for further information about trademark registration.

Copyright Protection

One of the great misconceptions about copyright protection is that it protects an idea. This is not so. Copyright merely protects the expression of an idea in material form, or the 'written down' version, recorded version or printed version of your idea.

What protection does copyright give me?

Generally speaking you will own the copyright in the artistic, musical and literary works you create. There are, however, important exceptions to this general rule. For example, you do not own the copyright in works you create as an employee. Copyright belong to your employer.

As the owner of copyright in your brand or logo, you have the right to:

* Reproduce your brand or logo.

* Communicate your brand or logo to the public (through advertisements, radio, television or the internet).

* Bring an action against other traders who infringe your copyright.

What is the procedure and how much will it cost me?

Copyright protection in Australia is automatic upon creation. This means it is effectively free. You do not need to formally register your copyright to gain protection. Contrary to popular belief, you do not need to include the (c) symbol on your products. Having said this, it is a good idea to include the (c) symbol, to warn other traders that you are aware of your copyright and may enforce it if necessary to protect your products.

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Design Protection

Designs which are visually distinctive shapes, patterns or configurations and which have an industrial or commercial use can be registered through IP Australia (www.ipaustralia.gov.au). Designs which are merely artistic works cannot be registered but will be covered by copyright protection.

What protection does a registered design give me?

If you have a registered design, you may prevent others from using your design without your permission.

What is the procedure and how much will it cost me?

You must complete an application form and submit it to IP Australia (www.ipaustralia.gov.au) along with an application fee of $90. It is often worth retaining an intellectual property lawyer to help you complete your first design registration.

Business Name Registration

A business name is the trading name under which a person or business operates. If your business name is different to your own name, you will need to register it in each state and territory of Australia in which you trade.

What protection does business name registration give me?

Contrary to popular belief, registration of a business name does not mean you own the business name and does not give you exclusive rights in that name. It will not stop other traders from using a similar name, or the same name if they have registered it as a trademark. Registration of your business name is merely a consumer protection requirement to create a public record of the business proprietor for each business in Australia.

What is the procedure?

Registration of a business name is administered by the fair trading office in each state and territory (for instance, in New South Wales, this is the Department of Fair Trading, which charges approximately $122 for business registrations).

Domain Name Registration

As our community embraces the internet and consumers gain confidence in e-commerce, there is an increasing trend for businesses to trade online. Domain names are becoming valuable 'cyber-addresses' for businesses on the internet. If you want to set up a website, you will need to register a domain name.

What protection does domain name registration give me?

Registration of your domain name does not give you any protection per se, but does protect against someone else using a domain name that you may wish to use to sell your products online. There have been several cases of what is known as 'cybersquatting' where cunning individuals have registered domain names associated with well-known brands and have either passed themselves off as the legitimate brand owner, created links to send consumer to their own website or charged the legitimate brand name owner a fortune for the domain name rights.

What is the procedure and how much will it cost me?

In Australia, domain names are regulated by auDA (au Domain Administration) The retail price for a domain name varies depending on the registrar or reseller, what services they offer, and length of your registration. Registration can cost anywhere from $60 to $700. A list of registrars is available at the auDA website (www.auda.org.au).

Other Legal Protection

The common law and other legislation such as the Trade Practices Act provide other legal rights, remedies and protection measures to help you protect your brand or logo and enforce your rights against competitors. In addition, the Patents Act allows you to register and protect new inventions that meet the strict criteria set out in the Act. You should seek legal advice if you require further information.

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  Practical Tips and Pitfalls to Avoid

* Before your trademark is registered, you can use the TM symbol to warn other traders that you have a claim on the mark. After your trademark is registered, you can use the (r) symbol to indicate that your trademark is registered and protected.

* Not all trademarks can be registered. You may not be able to register your brand if it is
descriptive or includes geographical names or surnames, or if it infringes an already existing trademark. For this reason, you should obtain a trademark search and report from a trademark attorney or a solicitor specialising in intellectual property.

* It is important that you do your homework before developing a brand or logo, to ensure you are not using a brand which is the same as, or deceptively similar to, that of someone else. Otherwise, you could yourself unwittingly embroiled in a costly legal action.

* Before you use any artistic, musical or literary work, make sure you have gained permission from the copyright owner to use the work. Be particularly careful when you develop your advertising campaigns.

* Be warned, if you retain the services of a consultant graphic designer to create your corporate logo, they will own the copyright in your logo at first instance. It is therefore extremely important that you ensure your agents and contractors agree to assign you the copyright in the works they create at the outset of the relationship. A valid copyright assignment must be clearly expressed, in writing, and signed by both parties.

Effective protection of the intellectual property in your product and branding is essential to build value and protect your existing business from predators. If you wish to sell your business, the brand is where much of the value in your business will lie. Protect your brand and you are protecting the future value of your business.

*Anna FitzGerald is from Simpsons Solicitors (www.simpsons.com.au).

  

Protect Yourself

Willie Erken is a successful businessman who placed importance on protecting his intellectual property. He knew he had a trademark worth protecting when he developed the Wagtail, a pivoting window cleaner which won a Best Innovation of Australia Award and has been featured in Sydney's Powerhouse Museum. The name is distinctive and evokes images that perfectly fit the product's main feature. This is a lateral pivot which allows the cleaning head to swing easily in an arcing motion with only a small flick of the wrist.

Since Erken registered it as a trademark, and took out patent protection in a number of countries, the Wagtail has enjoyed a growing international market.

Trademark registration is not compulsory, but it is advisable. Should another party be able to prove that they are the original owners of the mark you are using, your business could be sued for infringement of their rights. Protection against misrepresentation is available trade practices and fair trading legislation and it is also possible to take action under common law but these can be time-consuming and expensive exercises.

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IP Strategies

According to IP Australia, the real value of intellectual property is the way in which it is used as an integral part of other business strategies such as research and development, capital-raising, marketing and business development.

A clever business makes clever use of intellectual property. Developing effective strategies to protect and use that property can provide an important, sustainable competitive advantage.

IP Australia recommends the following checklist for companies starting out with an intellectual property protection plan:

* Identify all intellectual property associated with your business.

* Check whether you own all intellectual property used in your business or that you have the right to use it.

* List registered intellectual property and identified assets in dollar value.

* List unregistered intellectual property and give it a dollar value.

* List other valuable assets such as client lists and corporate knowledge.

* Identify key staff involved in developing, maintaining and protecting your intellectual property.

* Educate staff on the nature of intellectual property, how to protect it and their responsibilities.

* Consider insuring your intellectual property against others infringing and against you infringing others.

Smart Start

For information on how to utilise intellectual property to strengthen your business, ask for a free copy of Smart Start. Smart Start is a free product developed by IP Australia to help educate SMEs about intellectual property in the start-up phase of a business. It addresses issues ranging from understanding the different types of IP through to strategies for IP management and commercialisation. Smart Start covers topics such as business names, domain names, confidentiality agreements and trade secrets and franchising, as well as information on patents, trademarks and designs.

Smart Start is available as a hard copy booklet and can be ordered by emailing IP Australia's marketing team at marketing@ipaustralia.gov.au. For further information on intellectual property or other IP Australia publications phone 1300 65 1010 or go to www.ipaustralia.gov.au