As brand architects it’s our business to know about brand ownership. You have absolutely no idea how many people believe that once they’ve had a brand designed and paid for it, they own it. If your one of those people I need to very quickly shake you from your complacency.
Lets deal with this step by step.
1. You, your company, organisation, corporation or conglomerate DO NOT OWN YOUR BRAND without an assignment from the designer, allowing you to use it and granting you copyright status. Payment doesn’t automatically give you ownership and you should ensure you have a written assignment before you venture one more step.
2. Your name isn’t automatically protected either just because you are registered by the State Business Names Authority. These bodies are usually attached to the consumer affairs department and their commission is to register the name for use to protect the consumer and nothing more. YOU DO NOT OWN YOUR NAME because you’re registered with them.
3. The only real protection you can claim is by registering your name and brand design at the Trade Marks Office and at present that takes approximately nine months. You can register your name in plain type and/or register your brand as a graphical representation and only when you receive your certificate will you be the proud owner of your brand/name.
Right now you’re thinking, here we go again, the old guy at the box is rambling on a bit. Well just in case you are intending to ignore me and believe it can’t be true, here’s a few tales of woe to give you a sleepless night. The following examples are from, The Australian Government Advisory Council on Intellectual Property paper – A review of the relationship between trade marks and business names, company names and domain names:
Case study 1 – Business names: A Brisbane woman was about to start up a new business. On learning that it could cost in excess of $1,000 to obtain registration of a trade mark, her accountant advised her that a cheaper option was to register a business name with the relevant state authority. She was advised that by adopting this approach she could achieve ‘protection’ for her trading name for less than $100. She took the advice and commenced use of her registered business name without conducting a search of the trade mark register. Several months later she received a letter threatening her with legal action for infringing a trade mark made up of the same words. Clearly, the other business had prior rights to the name. She then had to make the difficult decision whether to resist the claims or to adopt a new trading name. She decided to adopt a new name even though the cost of doing so was considerable.
Case study 2 – Business names: A business operating out of several locations in the South East Queensland area developed a wide reputation under a particular name. Several years after starting to use the name the business received a letter from a solicitor representing someone who had unsuccessfully applied for a position with the business. The letter said that this person had recently obtained the trade mark for the name and so the business no longer had the right to trade under the name. In the meantime the person began to use the mark in his new business in direct competition with the first business. The first business owner had the cost and anxiety of collecting documentary evidence that they had been using the name, but eventually was successful in refuting the allegation of infringement.
So don’t say we haven’t warned you. If your in any doubt find out more. We are available to advise you at lay level and we do strategically network with one of the biggest Patent Attorneys in Australia. A five minute chat can save you many thousands of dollars and a good deal of heartache. Call us for a free consultation and we’ll happily refer you to the right people.