Welcome Jacqui Pryor - Trademarks for HBB

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Barbara Gabogrecan
President

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Barbara Gabogrecan » Sat Apr 21, 2012 10:56 am

Hi Jacqui,
as Pete said, there are lots of great tips here and I really did not know any of them - even though I do have a trademark! One question, if your business closes and it has a trademark, do you have to de-register the trademark? And when you have a trademark, do you have to keep paying a fee to keep it registered?

One thing that interests me; if you want to use ordinary words as a trade mark - how difficult is that? For example If I wanted to register 'Sik Painting by Gabogrecan' - as 'silk painting' are ordinary words, are they likely to get through? What if I left my name off? Is it better to have an image that is always seen with the words?

I will wait with interest for your reply.
Barb
Barbara Gabogrecan assists HBB's to market their business online
http://www.HomeBasedBusinessAustralia.org

Barbara is an artist specialising in silk painting; her video is on page one of You Tube http://youtu.be/1ZA9HObN_Go
http://www.SilkPaintingByGabogrecan.com/

Having survived a stroke and a brain tumour, Barbara wrote a book titled 'Thank God I Had a Stroke' to motivate and inspire others suffering from similar afflictions.
http://GabogrecanStrokeRecovery.com/
Barbara Gabogrecan
 
Posts: 341
Joined: Sun May 03, 2009 12:57 pm

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Sat Apr 21, 2012 12:48 pm

Hi Peter & Barbara - thanks for posting your comments. I am glad you are finding my posts interesting and helpful! To answer your questions:

Will it go through more quickly if someone like you does it for me, rather than trying to do it myself?


A trademark will take a minimum of 7.5 months to register, regardless of whether you use an agent or file yourself. This is mostly to allow for the six month priority period available to international applicants, as touched on in my last post re international registration. However, in cases where you face any issues during government examination, having an agent on board can be a great advantage to overcoming those issues. In those cases I would suggest that yes, it is a quicker process using someone like me rather than doing it yourself. Quite often self-filers don't fully understand the issues presented to them, or the options available to overcome those issues so just let the application lapse. Wherever possible an agent will of course do all that they can to see the trademark eventuate in registration.

I know the Govt is telling us that we can do everything ourselves online now - but can we, really?

Yes, you can. I wouldn't necessarily suggest it in most cases but you have the same access as I do to complete the filing. If nothing else, I always encourage at least having the trademark search conducted before filing, by someone who understands the trademark laws and systems. As we know it takes a long time to register a trademark so the search can identify any possible problems and potentially save time & money. Whilst the database is publicly available, people often assume that because the identical trademark isn't already there that they are fine to move forwards and are then (understandably) disappointed when they receive a report saying that there are conflicting trademarks. Ensuring the application is filed correctly can also save time/money - for the reasons previously posted - so this is another reason I don't often suggest the DIY approach to trademarks!

To have to re-register everytime we want to add something seems like an enormous task and very time consuming.

Not to mention costly! This is why we really do suggest including as many products/services as possible initially to save on having to re-register everytime. Depending on the nature of a business there can be ways to claim broadly for goods/services that will cover current/future business activities. This is one of the top reasons I would suggest using an agent rather than self-filing - the description of goods/services will be a massive part of the application and ultimately registration, and will be the biggest reason that self-filers have to re-register the same trademark down the track. An agent can advise on the best application for a particular business to save the need of reregistering.

But I had no idea I had to do the original registration in both black and white to enable other colour chages.

Just to clarify a little further - you don't absolutely have to file in black and white; you could in most circumstances even request that an existing 'colour' logo be amended to another colour in the future (unless you have specifically stated in your application that particular colours are a part of your trademark); however, by doing it in black and white initially you wouldn't then have to remember or fuss around with requesting amendments if the colours changed - you would be good to go straight away. Another reason to register in black & white in Australia is that other countries will automatically claim colours as a feature of your trademark if you file in colour. So, for those looking to export a product that's branded with, let's say, a blue logo and wish to use the Madrid filing system (where the mark must be identical to the Australian one) they would automatically be locked into the logo staying blue in a country such as USA.

One question, if your business closes and it has a trademark, do you have to de-register the trademark?

You are not under any obligation to deregister the trademark. However if business has stopped trading you may wish to sell the trademark, or license it to someone else. Funnily enough - the post I will be making today is about exactly that!

However, you should be aware that trademarks are vulnerable to removal if they remain unused for a certain period of time, or if they are found to have been registered in bad faith. So, if you closed your business and they trademark wasn't used for a period of time some-one else could actually ask the government to remove the registration due to the non-use. It would be up to you to challenge their request if you wished to maintain registration, and prove that you had actually used it within the time frame.

And when you have a trademark, do you have to keep paying a fee to keep it registered?

Only every 10 years. No annual fees. Once registered your rights are in force from the date you first filed the application and 10 years later you can renew those rights if you wish. It's important to keep the government office up to date with any address changes during that time to ensure you receive reminders to renew the trademark. The government won't chase you up if reminders are returned to them. (This is actually another good reason to use an agent - we would diarise renewal notices for you AND follow you up about renewing the trademark).

One thing that interests me; if you want to use ordinary words as a trade mark - how difficult is that? For example If I wanted to register 'Silk Painting by Gabogrecan' - as 'silk painting' are ordinary words, are they likely to get through? What if I left my name off? Is it better to have an image that is always seen with the words?


As noted in the initial post - a trademark must be capable of distinguishing its products or services from other people's. Using your example, which I will assume is a name you would apply to a silk painting - Silk Painting by Gabogrecan would be ok because the addition of your surname makes the overall name capable of 'branding' the silk painting as yours and not a silk painting that could be anyone's - if you left your name off, so applied just for Silk Painting (in relation to 'artworks') it would be very difficult to register - because other people that produce artwork would need to use the term Silk Painting honestly during the course of their business. Often though in situations of 'ordinary words' you can actually over the objection from the government by providing evidence to them that shows that how you have promoted the name it acts as your brand and distinguishes your goods/services.

As to using an image - this again would depend on the precise matter; some words/names are distinctive enough in relation to their products/services that an image wouldn't make any real difference one way or the other. In some cases, an image with common words will be the thing that avoids objections and in other cases, where the words are so descriptive then the issue would still apply whether you included an image or not. Using your example again (assuming no similar marks are already there) then Silk Painting by Gabogrecan would probably be fine without an image; but Silk Painting + image would probably still have an issue because of how descriptive the term Silk Painting is for artwork. Note however, if you wanted to register "Silk Painting" in relation to products/services that the term isn't describing it would be ok - for example "Silk Painting" for bus charter services would be ok, because these 'ordinary words' aren't common in connection with bus chaters.

It really is a case-by-case thing when it comes to trademarks!!
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Sat Apr 21, 2012 12:50 pm

Licensing & assigning

As discussed earlier this week, trademark registration gives the owner the right to ‘authorise others’ to use the trademark in connection with the goods and services nominated. Therefore, if you intend to franchise your business – and therefore wish to grant others the right to use your names and logos you must register your names and logos as trademarks. Imagine if you didn’t register and then gave someone permission to use your brands, only to realize you have given them permission to breach someone else’s rights?!

As a trademark owner you get to determine who is allowed to use your trademark for the goods/services you have nominated – and, you may charge a licensing fee or royalty accordingly. These fees are not set in stone and may be negotiated between you as the licensor and the other person as licensee. It may be a flat fee per month/quarter/year, or often a licensing fee is based on sales – a percentage of turnover or profit; sometimes, when dealing in products it may be a set amount per unit sold.

As the licensor you are able to maintain quality control over your trademarks – dictating where and how the marks may be used by other people.
One licensing strategy when it comes to Intellectual Property, including Trademarks is to own the property in your own personal name and then license the use of the trademark back to your business or company – either for a fee or not, this would be up to you as the owner. By owning the trademarks in your own name, you retain rights past the point of retirement or selling your business. You could then consider an ongoing license with any new owner/operator of your business so that you continue generating an income from the licensing fees – or, you could consider selling the valuable branding of your business to the new owner/operator for an agreed sum.

If you agreed to sell the trademark/s, as separate assets in any business transaction, you would then need to formally request that the rights be assigned to the new party. This is usually done via a Deed of Assignment, which sets out that the current owner transfers its full rights over to the new owner. This deed along with relevant forms, are lodged with the Trademarks Office so that the new owner may be recorded on the public record.
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Greg Chapman » Sat Apr 21, 2012 4:52 pm

Hi Jacqui, trademarks are an interesting area however, there are a lot of people who like to game the system. Dick Smith, for example, has been notorious in this regard (eg his TT biscuits which were knock-offs of Tim Tams). After the cease and desist order did he get to keep his profits on this and for his other knock-offs?

His behaviour certainly hasn’t hurt his reputation.

Greg Chapman
http://www.empowersolutions.com.au
http://www.AustralianSmallBusiness.net.au
May Your Business Be - As You Plan It!

Dr Greg Chapman - The Profit Whisperer
http://www.empowersolutions.com.au

Author of Married to the Business: Honey I love you but our business sucks http://www.MarriedtotheBusiness.com.au

The Five Pillars of Guaranteed Business Success http://www.FivePillarsBusinessSuccess.com

Price: How to Charge More Without Losing Sales http://www.IncreaseYourPrices.com.au
Greg Chapman
 
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Location: Melbourne, Australia

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Sun Apr 22, 2012 12:38 pm

Hi Greg,

Thanks for your comment. I actually follow your blog so it's nice to see you and 'meet' you here!

The Arnotts & Dick Smith dispute over the biscuit brand was ultimately settled out of court. So, there's really no way to no for sure what the settlement was.
From what I can find, Dick Smith changed the packaging of his Temptin biscuits, which appears to have been the main focurs of the settlement reached. The fact that the Temptin trademark is still registered to Dick Smith Foods now suggests that the agreement reached will have been to do with how Dick Smith Foods promotes and displays its trademark and packaging etc and not necessarily motivated by a financial settlement. (Of course, there may have been a monetary factor with in that agreement, but companies of this size are often more concerned about their brand being diluted by another's similar use than they are about money...)

So, in that particular case, a decision was never handed down by the courts - there were of course a lot of people on Dick Smith's side (as well as Arnotts) that simply didn't feel that the Temptin name was confusingly similar with the Tim Tam brand, which is ultimately what trademark infringement comes down to.

You're absolutely right though - some people perhaps don't abide by "trademark law", but this is no different to any other area of law I suppose - there will always be people trying to game the system, as you say.
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Jacqui Pryor » Sun Apr 22, 2012 12:39 pm

Recap of the Week
I have off loaded quite a bit of information this week on the subject of trademarks so thought I would end my posts with a recap:

What is a Trademark?
Any ‘sign’ (name, logo, slogan etc) you use to brand your goods/services as yours, and to distinguish them from the goods/services of others; A trademark will be more difficult to register if it is too similar to an earlier trademark and covering similar goods/services or if it is too descriptive and commonly used in connection with your particular goods/services;

Why should I register?
Registering your trademark/s is the only way to ensure you are recorded as the owner, are granted the right to use/promote the trademark for the goods/services nominated so you can be safe in your promotions – knowing that no-one else can make you stop using that trademark. As the owner of the trademark you can also license the use to others if you wish, and take action against anyone breaching your rights.

What if I Export products?
Trademark registration is country-by-country; searches should be carried out in each country where you intend to promote your trademark and ultimately registration should be sought in those countries. Remember that you have a 6-month grace period to do so that will offer you the same priority as though you filed internationally on the same day as in Australia;

I am a small business, how can I afford it?
Familiarise yourself with the ‘tips’ posted earlier this week to ensure you get most value for your money – these tips apply whether you DIY or employ an agent. Also compare the cost of not-registering versus the cost to your business if you are inadvertently infringing someone else’s rights and they take action, or against the cost to rebrand rather than spend the money in defending yourself against claims of infringement! Costs, even via an agent can start from $880.00 over 2 stages/over 7 months – securing your rights for 10 years – versus thousands upon thousands in infringement defense or in rebranding costs!

I’ve really enjoyed contributing this week and thanks to everyone for reading! I really hope you have found these posts informative and helpful. I of course welcome any questions or discussions on the subject!
Jacqui Pryor is an Australian Trademark Specialist with 13 years experience in trademark matters, and holds a Graduate Certificate in Trade Mark Law & Practice.
Jacqui is also the director of Mark My Words Trademark Services, providing affordable, friendly and reliable services in connection with trademark registration and related matters.
Web: http://mmwtrademarks.com.au/
Email: info@mmwtrademarks.com.au
Blog: http://mmwtrademarks.wordpress.com/
Jacqui Pryor
 
Posts: 11
Joined: Thu Mar 29, 2012 10:06 am

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Barbara Gabogrecan » Sun Apr 22, 2012 12:53 pm

Thanks so much for not only providing such knowledgeable information, but also for your easy to understand responses to our questions.

I do hope that you will keep accepting any comments that still come in as I know a couple of people have told me they will be commenting - they were just inundated with work at the time that your posts appeared.

I think it is great that over 60 people have read your posts and I know that this number will increase over time. Many non members read the posts, but cannot write comments, ask questions etc. But your 'word' is getting out there all the time.

Again, many thanks
Warm wishes
Barb
Barbara Gabogrecan assists HBB's to market their business online
http://www.HomeBasedBusinessAustralia.org

Barbara is an artist specialising in silk painting; her video is on page one of You Tube http://youtu.be/1ZA9HObN_Go
http://www.SilkPaintingByGabogrecan.com/

Having survived a stroke and a brain tumour, Barbara wrote a book titled 'Thank God I Had a Stroke' to motivate and inspire others suffering from similar afflictions.
http://GabogrecanStrokeRecovery.com/
Barbara Gabogrecan
 
Posts: 341
Joined: Sun May 03, 2009 12:57 pm

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Greg Chapman » Sun Apr 22, 2012 2:38 pm

Hi Jacqui, I am not surprised that people will game the system, but just that a serial gamer as Dick Smith is still held in high regard. It seems that 'underdog' status which is how Smith portrays himself [although I like to think of him as one of the 1% - not that I have a problem with that- wouldn't be adverse at being able to qualify myself] seems to trump ethics today. The idea that the use of a similar name and packaging along with the same recipe for the biscuit was a co-incidence beggars belief. Still I give him top points for front.

Greg Chapman
May Your Business Be - As You Plan It!

Dr Greg Chapman - The Profit Whisperer
http://www.empowersolutions.com.au

Author of Married to the Business: Honey I love you but our business sucks http://www.MarriedtotheBusiness.com.au

The Five Pillars of Guaranteed Business Success http://www.FivePillarsBusinessSuccess.com

Price: How to Charge More Without Losing Sales http://www.IncreaseYourPrices.com.au
Greg Chapman
 
Posts: 15
Joined: Sun May 03, 2009 2:30 pm
Location: Melbourne, Australia

Trademarks for HBB

Postby Robyn O'Connell » Mon Apr 23, 2012 12:46 am

Hi Jacqui,

Thanks for a very interesting topic, one many small businesses are not aware of. Fortunately I have a son who is in this field and he certainly enlightened me and you have confirmed everything he has told me.

Many of us are small businesses, however these are the types of topics we appreciate getting information on, even if it is only to point out the risks we take - that is good business sense!

The nice part about these forums, is that at any time, a search can be done on this topic and the answer will be there for them immediately! So I'm sure your posts will be viewed for a very long time to come.

Thanks again
Robyn O'Connell
Silver Celebrants
Robyn O'Connell
 
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Location: Mitcham

Re: Welcome Jacqui Pryor - Trademarks for HBB

Postby Geoff Haw » Tue Apr 24, 2012 12:37 pm

Hullo Jacqui,

This topic you are discussing in this coversation is a great idea - I guess we thank Barbara for targeting an expert (you!) to explain the whole trade mark process.

Last year we went through the business of registering a trade mark related to a series of books we are doing. One of our members, Jane, provided some very useful advice, and overall it was not too difficult a process. (There's no doubt it is a pretty slow process, but I can see good reasons for 'hasten slowly'.)

However, when I combine our relatively limited experience with your wisdom and experienced advice, I feel quite comfortable in stating that I now understand the TM process much better, thanks to you.

However, I do agree that not many people seem to consider the wisdom of TMs, so hopefully more people will be alerted to do their 'due diligence'. Importantly, we can now advise people we know of the basic elements of TMs, and of course, we can refer them to you, an experienced font of knowledge.

Very best wishes and thanks

Dr Geoff Haw
Geoff Haw
 
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