Donna Patane is a highly qualified Lawyer and Trademarks Attorney based in Cairns, and when it comes to winning a dispute in court over the use of a business name, the person owning the trademark is holding the gun, and the person with only a business name registration is holding the sword. Donna's advice is don't take a sword to a gun fight, as you will lose every time.
In this episode we discuss:
- Why small business owners need to protect their business names
- Trademark rules are similar in Australia, USA and the rest of the world (except China)
- The four entities, Company names, Business Names, Domain Names and Trademarks, and which is more powerful in a court of law.
- A business name is there to protect the consumer, not the business owner. WOW!!!
Advice for all business owners:
Make sure you check the ASIC website for company and business names registrations. Also, check domain registrations and quirky variations using numbers and letters, and go onto IP Australia.
If you considering selling overseas, you need to check the World Intellectual Property Organisation and Global Brand Database. You can also lodge your trademark with customs to prevent imports that may breach your trademark.
You want to make sure you are holding the gun at all times.
You can register a trademark even if you're not using it yet, but you have 5-years to use it otherwise someone else can apply for NON-USE. Also, if you've been using a trademark and stop using it for 3-years someone can ask for NON-USE. You then need to prove it is being used.
If you have a tagline for your business, it should be registered as a trademark if you want to protect it and it should be registered separately to your business name.
Products: Apple and CocaCola have a massive amount of product and name trademarks, and this is what added value to these companies over the years. Some companies didn't protect their names sufficiently, such as ESKY and Trampoline and their names became common language.
A trademark adds value to your business because you're holding the gun and this is why McDonald's hold so much value. Banks will loan money based on a recognisable name.
Do It Yourself
You can register your trademark, or you can use a trademark attorney, and yes it will cost more, so to reduce costs you can do a lot of the initial groundwork and investigation yourself before seeing a lawyer.
When you register a trademark for good and services, there are 45 different classes it can be registered under, so it's essential to go through this list and see what applies to your business and business name.
Classes allow two similar trademarks to exist, as long as they are proving different goods and services.
Monday Morning Tip
Go straight to IP Australia and the Global Brand Database and check your name. If it is not registered, then register it as soon as possible. Therefore be proactive, not reactive, it will save you money in the long run.
If you have any questions about this podcast or TRADEMARKS, please email me at
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This year's theme is 'Communication, Persuasion and Influence'. David M Frees will be the Keynote Speaker for this event, and he is coming all the way from Pennsylvania, USA, and there will be eight other speakers over the two days. Bookings are NOW available. For more details, please visit my EVENTS page (Strictly limited to 50 attendees).
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