The branding associated with a small business is fundamental to establishing commercial goodwill and building reputation. Business names, symbols and logos – referred to in this article as trade marks – play a crucial role in a brand’s identity and allow businesses, big or small, to differentiate their products or services from those of competitors. If used properly, a trade mark can serve as an excellent marketing tool for a small business.
We often see businesses employ a ‘set and forget’ approach by, for instance, registering several key trade marks and then taking no further action. Trade mark management is an ongoing process and it is important that businesses have systems in place to help monitor, revise and renew trade marks as required.
Some of the key trade mark decisions of the Federal Court of Australia in 2023 have shown that failing to stay on top of and conduct regular ‘health checks’ of a business’ trade mark portfolio and brand protection strategy can have significant adverse consequences for small business owners.
To assess and maintain the ‘health’ of your business’ brand and trade marks, consider the following questions:
- who is using the business’ registered trade marks? Are they being used by the registered owner of the trade marks? If not, are there proper arrangements in place to ensure that the registered owner is maintaining control over any third party use of the trade marks? If the trade mark owner does not maintain sufficient control over its use, the trade mark registration may be vulnerable to removal from the Register. We explored this in our article here.
- when was an audit of the business’ unregistered trade marks last conducted? Are all trade marks which are in use currently registered? Have any of the trade marks being used by the business changed in recent years? Are there any gaps in the business’ portfolio of registered trade marks?
- when was an audit of the business’ registered trade marks last conducted? Are the business’ trade marks being used and, if so, are they used properly to perform a branding function? Are the registered trade marks being used in relation to the goods and services in respect of which they are registered? If the answer to any of these questions is ‘no’, the trade marks may be vulnerable to removal from the Register for non-use.
- does the business’ trade mark contain any environmental elements or credentials? If so, are the environmental components of the trade marks in any way misleading or deceptive? See our discussion here.
Holding Redlich’s expert team
Holding Redlich has a team of legal experts with deep expertise in safeguarding small business’ valuable brand identity through comprehensive trade mark solutions.
We also manage worldwide portfolios for many significant brands and we deliver protection in connection with all aspects of trade mark and brand protection services, as set out in further detail below.
If you need any assistance with auditing or reviewing your current trade marks portfolio, please contact Ian Robertson at [email protected] or Sarah Butler at [email protected].
Disclaimer
The information in this article is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this article is accurate at the date it is received or that it will continue to be accurate in the future.
Content provided by Holding Redlich Partner Ian Robertson and Special Counsel Sarah Butler