1. It’s possible your business name registration is already breaching someone else’s trademark.
Most of us would assume that if we’ve registered our business name with ASIX we’re in the clear but according to IP Australia by just registering a business name you might already be infringing on someone else’s trademark.
Lets clarify the differences between a business name and a trademark.
- A business name is simply a name or title under which a person, or other legal entity, trades. A business name does not in itself give you any exclusive rights over the use of that name.
- A trade mark is a right that is granted for a letter, number, word, phrase, sound, smell, shape, logo, picture and/or aspect of packaging. A registered trade mark is legally enforceable and gives you exclusive rights to commercially use, licence or sell it for the goods and services that it is registered under.
What can I do about this? Firstly, you can search the Australian Trade Marks Online Search System (ATMOSS) to if your business name is already trade marked.
Searching ATMOSS will search through the entire IP Australia database of current and pending trade marks, however it is fairly complex so IP Australia also provide TM Check which is a simplified search tool. Both tools come with disclaimers to not use the information provided as a substitute for professional advice. Meaning, if in doubt get a lawyer.
At the end of the day though, you actually need to go through the process of registering your trademark to get a definite answer to the “am I breaching someone else’s trademark” question. Also, IP Australia claim to only offer information and not advice, so if you need specific advice you need to contact an IP Professional.
Your designer owns your logo’s intellectual property (unless otherwise stated).
Just because you paid for your logo design doesn’t mean that you own it. The designer maintains IP ownership as the creator of the original artwork. So, make sure you have a contract in place with your designer that clearly states that you own the logo IP.
One thing I have in place with my clients is that upon payment of their logo the ownership rights of that design transfer to them. With this in mind, we also include a clause that states the client only owns the final design and not the designs created throughout the process. This means that I’m free to use any of the designs left on the cutting room floor, which can sometimes come in handy for future projects.
3. No-one wants to take responsibility for a trademark breach
According to IP Australia “Organisations should also ensure that the contract with marketing companies and designers that help you with the creation of your brand includes a clause that requires them to prove that the design work will not conflict with IP, in any medium, owned by another company.”
So without a contract in place specifying the ownership of the logo this would suggest that the responsibility of a breach in trademark would fall back to the designer.
What happens when you breach a trademark?
Well, IP Australia are not trademark police enforcing the rights of trademark owners they only provide a place for hearings to take place. It would be up to the owner of the breached trademark to contact the offending business and perhaps engage legal proceedings.
*This information is only my best understanding of the topic at the time of writing. I’ve included links to many of the reference materials I used to pull this information together but also used information I gained from contacting IP Australia directly.