Why bother trademarking?

garden-shed-192058_640You’ve probably read the title and are expecting an article outlining the reasons why it’s so important to trademark and how to do it. But that’s not why I’m writing today, I am really asking the question – why bother trademarking?

I’ll fill you in on the backstory.

Like a good business owner, I trademarked my business in 2012.

Then, approx a year ago, a business trademarked a name very similar to mine, in the same Industry, servicing the same people, with similar offerings.

I consulted with my lawyer on sending a cease and desist letter to the other party – but after checking with IP Aust it turns out they had received a trademark in the exact same Class as me! (there are many different Classes you can register under ie. 35 is business services and 41 is mentoring)

After further enquiry, it turned out that when the person checking the mark had searched for competition in the Class – they had used the term Motivated to search – not Motivat – which is why I didn’t show up. Huge error on their part.

The only option we had was to contest the trademark and have it revoked and I paid the princely sum of $800 (which I do not have) to have my lawyer draft the appropriate information and send it off.

Fast-forward two months or so and it turns out that the business simply changed their description slightly with IP Aust so they have been allowed to remain in the Class and, therefore, in the same Industry as me with pretty much the same name!

It’s hugely frustrating as, firstly, I don’t understand why anyone would want a name similar to mine in the same Industry anyway. Secondly, I don’t understand the point in trademarking when it seems I’m not protected anyway. And, thirdly, it’s all great trademarking but if you don’t have the money to pursue it – which I don’t – what’s the point?

So, I ask you again, why bother trademarking?

Now excuse me while I go off and punch a wall.

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3 Responses to Why bother trademarking?

  1. Kate Ritchie says:

    Hi Alli, that really sucks. But there are lots of important reasons for registering a trade mark. We helped Rosie (see comment above) with her issue and had she not had a registered trade mark it would have been a much more grueling and difficult (and costly!) process for her.

    Some of the important reasons to register a trade mark in Australia:
    1. National protection for your brand even if you don’t yet have a reputation or presence in a particular region of Australia (eg, we’ve had clients with no trade mark registration come to us to try to stop someone in another state/city from using the same brand name in the same industry – in the absence of any prior reputation in that location there’s not much you can do to stop them).

    2. Protection from claims of trade mark infringement being made against you – as a small business owner the cost of defending a claim of trade mark infringement can ruin you. By having a trade mark registration others cannot sue you for trade mark infringement in relation to the goods and services for which your trade mark is registered.

    3. Asset – trade mark registration creates an asset for your business that can be sold, licensed (and franchised) or secured. Anyone can copy a business idea that isn’t protected by intellectual property but if you have a trade mark no one can copy it if it is identical or deceptively similar. So your registered trade mark can become the most valuable asset of your business.

    4. Exclusivity – no one else can use your trade mark or anything deceptively similar for similar or related goods/services to yours. This means that you will be able to have a distinctive brand that stands out from the crowd. You mentioned that someone else has a similar trade mark to yours and got around the process by changing their goods/services descriptions. Exclusivity does not extend to a monopoly over all goods and services in every industry but, if those goods and services are similar or closely related to yours and there is a risk of consumer confusion then you are well within your rights to oppose it/stop them from using and registering it.

    5. Enforcement – having a registered trade mark will usually make it easier to stop others from using a similar brand for related goods/services. For example, a trade mark registration shows that you are the exclusive owner of the trade mark. Businesses are much less likely to challenge/ignore a cease and desist notice, social media platforms are more willing to remove infringing pages/sites, domain name recovery can be easier and if you sell products then you can give notice of your trade mark registration to Customs who monitor for any counterfeit products entering the country.

    These are some of the key reasons to register a trade mark. You may not always be in a financial position or good legal position to stop all who you believe are infringing your trade mark but it puts you in a much stronger position and empowers you to make that choice.

  2. Tracy says:

    Very frustrating and unfair Alli! These decisions always seem so arbitrary. What indeed is the point of a trademark?! If it is any consolation, there will only ever be one Motivating Mum for us, the original and the best xx

  3. Rosie Shilo says:

    How frustrating! What a huge flaw in the system! I had a trademark breach earlier this year and luckily for me didn’t face any of your challenges – I was able to get them to cease and to pay some of my IP lawyer fees. I’d be asking higher up (consumer affairs?) what the point is if they could just do what they did – you obviously didn’t get the protection promised.

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