4 Trade Mark Mistakes Startups Should Avoid

by LegalVision - Natasha Bahari

Registering a trade mark should be at the top of your priority list when starting a business. Think of a trade mark as the foundation upon which to build your brand. It is what your customers will know you by. For example, take Uber, a very successful startup. As an online marketplace, it does not own any physical assets. Instead, the value of the business lies in its branding and intellectual property (IP). However, there are a number of trade mark mistakes that many startups make. This article sets out four common trade mark mistakes startups should avoid.

  1. Delayed Filing

Filing a trade mark should be at the top of your to-do list once you have settled on a name, logo or slogan that you want to represent your brand. Delaying filing your application carries the risk of someone else registering the trade mark you want before you. The consequences of this could be significantly detrimental. While you wait to register your mark, you are continuing to develop your brand. This means that, if it turns out you cannot register the mark at all, your rebrand will become more and more expensive.

For example, have you ever thought of why Burger King is called Hungry Jacks in Australia? Burger King was late to register its trade marks here and a small takeaway food shop in Adelaide went on to register the name before them.

It is important to remember that using the ™ symbol is insufficient to protect your brand. Only once it has been registered will you actually have exclusive rights over your mark. Once you have successfully registered your mark, you will be able to use the ® symbol that shows your trade mark is registered. This is what will protect you from other businesses using a similar mark.

  1. Unintended Infringement of Another Trade Mark

Before choosing a trade mark, you need to perform a comprehensive search on other marks your competitors are using. This is to ensure that the mark you have chosen is not infringing upon another business’ IP rights. When researching, keep in mind that changing or adding one letter to a registered brand name or slogan mark will probably still constitute infringement. Therefore, your mark needs to distinguish your goods and services from those of your competitors.

You also need to be aware of unregistered trade mark rights. Even if you have registered your trade mark and a competitor has not, they may have a claim if they have used the mark consistently, over a long period of time.

  1. Not Registering in Enough Classes

Once IP Australia has accepted your trade mark, you cannot change it. without a formal application. The classes in which you register your trade mark become the categories of goods and services that you will have protection in. Therefore, it is key that the classes you have chosen for your trade mark sufficiently cover your commercial activities and products.

Failing to register in a class that turns out to be relevant for your business may cause you to lose rights in that particular category. For this reason, it is important that, as a startup founder, you are forward-thinking in your approach to trade mark registrations.

  1. Failing to Assign Trade Mark Ownership Properly

As a startup founder, often you are collaborating with your co-founders to create IP and get your idea off the ground. However, when it comes to registering your trade mark, you must ensure you list the business entity as the trade mark owner. This can mean registering the trade mark under the company name or assigning the mark from the previous owner to the company. Doing so will ensure your startup does not lose the rights to the mark in the event that a founder or employee leaves and takes the IP rights with them.

Key Takeaways

When launching a startup, you are juggling a myriad of tasks, stakeholders and priorities. However, protecting your brand should be top of your list to safeguard your startup’s ongoing success. You should research and apply for a trade mark as early as possible to avoid issues down the track. If you need assistance registering a trade mark for your startup, contact LegalVision’s trade mark lawyers on 1300 544 755.


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