They Trade Marked What? – To Register Or Not To Register… That is The Question?

Trade Mark Lawyers Bondi Junction

They Trade Marked What?

From song lyrics, to colours, to signature poses. Over the years, there have been some unusual and unexpected trade marks that have been both successfully and unsuccessfully registered.

To Register or not to Register, that is the question?

To fully understand these unusual trade marks, we need to first understand what a trade mark is. Yeah, we know it’s not the most exciting part, right? But bear with us while we get the law ‘101’ out of the way.

A trade mark is essentially a sign and can include words, images, movement, sound, and scents, and can either be registered or unregistered. Unregistered trade marks are identified by the ™ symbol next to your product’s branding or logo. When it is unregistered, depending on whether it has accumulated enough of a reputation, your trade mark will be subject to the common law for legal protection. A registered trade mark, on the other hand, carries the ®symbol, and once registered, you have full legal ownership over it and can take legal action to prevent others from using it (i.e. prevent them from infringing your IP).

A registered trade mark is valid for 10 years from the date it is registered and can be renewed either 12 months prior to, or 6 months post the expiry date. However, if your trade mark is not actively being used, it can be removed from registration. This means that it would be up for grabs, and another business could potentially register it as their own and take legal ownership.

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Why are Trade Marks so Important?

Trademarks are all around us, but why are they so important? In short, a registered trade mark is a valuable business asset as it assists in creating a recognisable and distinctive brand. Essentially, it is your brand’s identity. It is also a valuable marketing tool as it can effectively communicate your ‘brand image’ to consumers.

The effectiveness of trade marks as a marketing tool to create brand awareness and affiliation has been tried and tested by some of the most well-known companies.

Everyone knows the phrase “The Race that Stops the Nation®”.
Fun fact – this phrase is actually trade marked by the Victorian Racing Club and is now solely associated with the Melbourne Cup.

Everyone knows the phrase “The Race that Stops the Nation®”. Fun fact – this phrase is actually trade marked by the Victorian Racing Club and is now solely associated with the Melbourne Cup. It helped the race establish its own identity that is recognisable nationwide (and arguably internationally as well). Another well-known phrase is “Super Bowl®” which needs no further explanation because over time, it has become associated worldwide with the brand identity of a singular sporting event. With this powerful marketing tool, renowned trade marks have launched entire industries of lucrative advertising deals for companies that wish to promote their products during the game (and if they’re lucky, even become pop culture phenomenon’s themselves).

We cannot stress this enough, because time and time again, we see young companies that are starting up continuing to overlook or by-pass a relatively simple and inexpensive legal process, which ties directly to their brand’s long-term growth potential. This is why it is absolutely crucial (and we cannot stress this enough), that you unleash the latent marketing potential of your brand’s identity by looking into trade mark registration.

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Photo by Claire Jones on Unsplash

Using Trade Marks to Tap into the Subconscious

There are many words that you use every day that you automatically associate with certain companies or products which you probably don’t even realise are trade marked. Some of these include “Band-Aid®”, “Google®”, “super-glue®” and the Aussie classic, “Vegemite®”.

There have been some more let’s say interesting trade marks that have been both successfully and unsuccessfully registered worldwide. Many celebrities have jumped on the trade mark bandwagon to protect their brand. Notably, Paris Hilton’s catchphrase “that’s hot®” was successfully registered in 2007, as well as some of Taylor Swift’s song lyrics such as “This sick beat®” and “Party like its 1989®”. It’s not only words and phrases that have been successfully registered as a trade mark. Cadbury, for example, obtained a registered trade mark over the shade of purple used in their logo and on their packaging. Additionally, Usain Bolt’s ‘lightning pose’ made famous by him in the 2012 Olympics, was also successfully registered.

Some further unsuccessful (but nonetheless amusing) attempts include Harley Davidson’s application to trade mark the sound of their revving engine. Additionally, Kylie Jenner’s attempt to trade mark her name ‘Kylie’ made headlines in 2017 when it was successfully blocked by Kylie Minogue, arguing that it would create confusion and damage to her own brand. Recently, Procter & Gamble have applied to register common abbreviations of WTF, LOL and FML for soaps and cleaning products. While the application filed in August this year has not yet been decided, it may prove problematic if the abbreviations are deemed to be common, everyday language.

When seeking to register a prospective trade mark, knowing what can and cannot be registered is important to ensure that you don’t make any costly mistakes in your application.

What is even more of a priority is to trade mark your brand name, logo, symbol or motto as soon as possible to prevent the greater risk of competing brands passing off their products as yours by using similar branding or marketing IP.

If you require any assistance, contact one of our trade mark lawyers at info@lazaruslegal.com.au or give us a call on 8644 6000.

At Lazarus Legal, we have your intellectual property protected. Whether you are looking to protect your brand in Australia only or worldwide, we have you covered. Let us deal with the boring stuff so that you can get out there and confidently use your mark to “rise above” and build your brand.

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