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10 must-ask questions before applying for trade marks
Andrew Stubbs • Jul 17, 2018

Intellectual property. It's a hot topic.

Why?

Because, in the globalised and ultra-connected world we live in, the intellectual property (IP) of individuals and businesses is increasingly at risk.

It's not just famous cases like Ugg Boots that are making the news. Trade mark, patent and copyright infringements in general are on the rise – both from the work of unscrupulous individuals/organisations and through innocent breaches of IP.

In Australia, interest in protecting ideas through IP rights is increasing. In the latest figures available, trade mark applications grew by 14 per cent – the highest growth in a decade. Copyright and design applications also grew, indicating that innovation is alive and well in Australia.

To successfully commercialise this innovation, it needs to be protected by law.

What are you doing in your business to protect your IP and your ideas?

Trade marking your goods or services may be the best option for you. Here we look at the key questions to consider before deciding to apply for trade marks.

In considering these questions, you will become clearer on the reasons for applying for trade marks and the process you need to undertake to protect your business…

1. What is a trade mark?

A trade mark is used to uniquely identify a product or service and distinguish it from the offerings of competing traders.

This can take many forms including:

  • A symbol or a number
  • A letter, phrase, or word (in a particular font)
  • A sound (such as a musical jingle)
  • A shape, picture, or logo
  • An aspect of product packaging

A trade mark is more than just a logo for your business (though a trade mark can be a logo). It covers you legally from someone trying to replicate the above aspects of your goods and services.

By registering a trade mark, you have the exclusive right to sell the product or service. You can also authorise others to use and sell it.

2. Does a trade mark last for life?

No. A trade mark must be renewed every 10 years to retain the exclusive rights to sell the product or service in question.

A trade mark registration can be renewed up to 12 months before the renewal date is due and no longer than six months after (in the latter case, extra fees will apply).

However, during this period you must demonstrate that you have actively used the trade mark – or the exclusive rights to use it may be rescinded by the Australian government.

3. Do all businesses need trade marks by law?

No. There is no requirement for a business to register any trade marks. It is NOT the same as a registered business name or registered company name, which all businesses must have.

However, if you want to protect the unique aspects of your business's goods and services, you should consider trade marks.

For instance, just because you have a business name and have registered the domain name of a product, it does not prevent another business from using very similar details as you for a competing product or service.

4. What are the main benefits of trade marks?

While trade marks are different to brands, they can become an important part of your identity. For instance, what would Qantas be without the red and white kangaroo emblem on the tail of its planes?

This is a registered trade mark that is instantly recognised and helps promote Qantas services around the world.

Once you register a trade mark, other businesses must respect that you have exclusive rights to its use – or you have legal recourse to take action.

5. How do trade marks differ from copyrights, designs, and patents?

Intellectual property (IP) includes all inventions, literary and artistic works, designs, symbols, names, and images that are used to trade.

There are many ways of protecting this.  Let's look at the simple case of a pen:

  • A trade mark application may be for the name of the pen or the type of packaging used to distinguish it from other pens.
  • A patent for the pen might be for a particular type of pen with a new way to store its ink.
  • Industrial design protection may be sought for the pen's new type of grip.

A copyright application is different again. This is sought to protect the IP of published or performed material. A copyright grants "the exclusive right to print, publish, perform, film, or record literary, artistic, or musical material or to authorize others to do so."

6. What's the difference between registered & unregistered trade marks?

You can use trade marks in one of two ways:

  • An unregistered trade mark – free to use but with restrictions; if someone has registered the same trade mark, they can take legal action against you. Using the ® trade mark symbol is an is an offence, though you can use TM to designate an unregistered trade mark.
  • A registered trade mark – you are legally allowed to use the ® symbol and nobody else is allowed to use the same trade mark; you can pursue legal action against them if they do so.

Note that there are some circumstances where even unregistered trade marks provide protection under law: for instance, if you have been using an unregistered trade mark for many years before someone else starts using it.

7. Are trade marks internationally binding?

Any trade mark registered in Australia covers only Australia. However, providing nobody has registered the trade mark that you want in another country, you can make an application for an international trademark.

This will protect you from overseas businesses using the names or other features of your goods and services.

Conversely, if you registered your trade mark overseas (but not in Australia) you are able to use ® to designate this, as long as you state the country of registration near to the symbol.

8. How do I apply for a trade mark in Australia?

To apply for an Australian trade mark, first decide if it's actually a trade mark you need. They are commonly confused with design rights: mistakes with applications waste time and can be expensive as there are no refunds of fees.

If you are sure you need a trade mark, the next step is to start selecting the goods or services for which you intend to use your trade mark. Group them into one or more of the 45 categories available. You may need help doing this from a professional.

Before applying, ensure that the trade mark you want to apply for is available. Use the search facility on the official government site IP Australia to avoid wasting your time.

9. What happens after I submit my application?

Mistakes in applications for trade marks are common. Take the time to get it right before submitting yours. It will take around 3-4 months to assess.

If your application meets all of the requirements, it will be registered. You will receive written notification and it will appear in the  Australian Official Journal of Trade Marks. It will also be visible in the search facility mentioned in the question 8.

10. What happened with Ugg Boots?

For Australians, there should be no greater warning about the dangers of not trade marking a product than the story of Ugg Boots.

As Aussies, we all love our Uggs. These sheepskin shoes and boots have been made for decades by a family-run business called Luda Production and we all know them as "Ugg Boots."

However, the trade mark for Ugg Boots is held by the American sheepskin company Deckers Outdoor Corporation. They registered it in over 130 countries.

Consequently, the company challenged the use of the name by Luda Production and any other companies around the world using it – even though the name was used in Australia for decades before the trade mark application was lodged!

This led to ongoing court action - with major headaches (not to mention costs) that could have been avoided.

Let this be a lesson to all Australian businesses to register trade marks that protect the unique characteristics (including the names) of their goods and services – before another company does.

Don't be the next Ugg Boots. Do what other Australian institutions have done and protected their names and products/services – from Vegemite to Qantas and the Wallabies!

Speak to your legal representative or accountant for more information on registering a trade mark.

Why Your Business Needs to Invoice Using the New Peppol Network

By Andrew Stubbs • 05 Jun, 2022
Here's some good news if your business sends invoices to business or government customers. Peppol* is on its way. (That's Peppol, not Peppa .) Ever had this conversation in your business? You or one of your team: "Hello, I'm calling to follow up the invoice we emailed to you last month. It hasn't been paid yet." Customer: "Really? We didn't receive that invoice?" In addition to the time and expense of following up, the cash flow delays create stress for you and they hurt your business. Thankfully, the adoption of Peppol will solve this problem. What is Peppol? Peppol is an obscure acronym for Pan-European Public Procurement On-Line. What's more important than what it stands for, is what it enables. Peppol is an international 'eProcurement' framework for the electronic exchange of information. It creates a standard approach for governments and businesses to structure and exchange information such as invoices and other documents. What Peppol means for you and your business Peppol makes electronic ordering, invoicing and shipping between governments and private companies faster, simpler and more secure. This means your business will get paid faster when dealing with government and larger businesses. In 2019, Australia and New Zealand adopted this platform for e-invoicing which, when implemented, will make 'we never received your invoice' issues virtually impossible. The new e-invoicing system is more secure than email and provides many other benefits. Which countries are adopting Peppol? There are currently 40 OpenPeppol member countries: 32 countries in Europe plus Australia, New Zealand, USA, Canada, China, Japan, Mexico and Singapore. Each country has a Peppol authority. For example, in Australia that's the Australian Tax Office (ATO). Is Peppol already in use? Yes it is. For example, the SuperStream system in Australia-which many businesses are currently using to automate the payment of employee superannuation contributions-is based on the Peppol protocol. How does e-invoicing work? The system connects the accounting systems of all businesses and government departments via the secure Peppol network.  Suppliers generate sales invoices in their accounting systems which are sent to Peppol.

Company Director? Why You Need to Apply for Your DIN

By Andrew Stubbs • 04 May, 2022
If you're a director of an Australian company-or you plan to be-take 5 minutes now to read this article. All existing directors (and intending directors) of Australian companies need to be aware that the Australian Government has announced the introduction of a new mandatory Director Identification Number (DIN) system. (You'll notice the term director ID is also used for DIN.) This system is the initial step in the Modernising Business Registry (MBR) Program which has been established under the Treasury Laws Amendment Act which was legislated by the Australian Government in 2020. More information on the MBR program can be found here . What is the DIN system trying to achieve? The DIN aims to provide accountability and traceability of a director's relationships over time, across all companies and will provide information on a director's involvement in what may be repeated unlawful activity, including illegal phoenix activity. It should also solve the problem of false or fraudulent director identities. What are the key features? It is mandatory for all directors, foreign directors and alternate directors of Australian companies to hold a DIN. The DIN is a unique 15 digit number. The first 3 digits will be 036 which is the identifier for Australia. The last digit is a check digit to help with accuracy when quoting your DIN. Like your tax file number, you will only be issued with one DIN which you will hold for life - even if you cease acting as a director for any period. To obtain a DIN, you will need to prove your identity so you will not be able to hold multiple DINs. Other office holders (e.g. company secretaries) are not required to register. The director is responsible for updating the DIN records for any changes in personal information within 7 days of the change. The director must apply personally. The process cannot be completed by your accountant, lawyer, spouse or executive assistant. There are significant penalties for non-compliance. How do you apply for a DIN? Directors have 3 options for applying. You can apply online from 1 November 2021. To use this method, you must first establish your identity via myGovID (an app you download on your smart device which is different from myGov). Once set up, your myGovID will make accessing a wide range of government services easier. (It's not just for your DIN application). For information on how to set up a myGovID please go to https://www.mygovid.gov.au/set-up During the DIN application process, you will need additional information such as your tax file number (TFN) and your residential address as per ATO records. It would also be advisable to have other personal details such as bank account details, medicare card or a recent income tax assessment available in case these are required. You can also apply by phone ( 13 62 50 ). During the call, the operator will ask for the identity documents you would have used to obtain your myGovID (passport and driver licence) as well as the additional information listed above. These details will be confirmed with the records held on existing government databases and, assuming the details agree, your DIN will be issued. Or you can apply by mail, but this is not recommended because the process for doing this seems vague ("Write to us") which means you can probably expect a lengthy process of certifying documents and coping with the vagaries of the postal system. One of the other two methods would be a better choice. When will you need to apply for a DIN? Transitional arrangements will allow directors to become familiar with the new requirement. When you need to have a director ID will depend on when you were appointed as a director.

7 Best Practices for Setting Your Small Business on the Success Track

By Andrew Stubbs • 07 Apr, 2022
If you're a small business owner, you're always on the lookout for better ways to go about routine tasks to boost growth and underpin reliability. So, yes, you have the will; now, what are the ways? What are those consistent routines you can instill that will have the most benefits? This article looks at the top 6 things you can do to help your business thrive. We're going to cover finances, goals, marketing, technology and you ! So, let's take a look… 1. Your finances are a scorecard … and a predictor Boil it all down and dollars in the bank are the report card on the health of your business operations. Surprising then that so many people don't really pay much attention to how much they've earned, nor how much they're likely to earn. As much as it might feel like a chore, reviewing your sales and financial projections and then using them to ascertain if you need business financing is a discipline worth cultivating . If you suspect that your cash flow is precarious, you should be checking out your options today. First metric to check: your credit score. If it is too low, you need to take steps to shore it up. Next, check in with your bank or finance broker about what loans are available. 2. Goal setting, goal achieving, goal celebrating So, if you're using current and future dollars in the bank to keep score, the next thing is to do something about it. This is where goal setting comes in. If thoughtfully set and persistently pursued, goals help you orientate your willpower and your energy at each moment of the business day. This is the hidden power of goals: giving you a good sense of direction and a way to channel your instincts towards wise objectives. Constantly checking in with your goals makes them a benchmarking tool to keep your business pointed in the right direction. Yes, just having goals helps. Actually achieving a goal helps too, of course! 3. Increasing the impact of your marketing Marketing is not magic. It is not a mystery. It is not an art. However, many less-than-reputable marketers will try to claim that it is. They do so to gain wiggle room to pad their invoices and cover up their lack of skill. What this means is that it is easy to waste money on ineffective marketing. The good news is that there are many low-budget marketing strategies that actually work to help grow your brand and reputation. Scout around on the internet and choose one or two new tactics. Deploy them and test them. If they work, double down. If they don't, try something else. If you can't tell if they're working, also try something else. Social media is the obvious starting place for these low-stakes experiments and the old classics of LinkedIn, Facebook and Twitter are where to trial them. 4. Bringing your business up to date technologically The ability of modern productivity and project-management tools to give small players the same capabilities as the big boys simply cannot be ignored. Harness them properly and they'll let your small businesses operate with the same productivity as the titans of your sector. And, if your business is in the services sector, the increased controls that business technologies can yield also lets you be highly agile - that's something the big boys can't do. So, ask yourself: are you taking full advantage of what's out there? Don't worry, the answer to this question is always 'no' - the field is simply moving too fast for anyone to be able to take full advantage. However, if you have a realistic view of your needs, then you have a yardstick to help assess all the solutions out there. When you know what you need the technology to do, then you can wisely choose what hardware, software, platforms and techniques to introduce. 5. SEO has changed and it is going to change again Google - indeed all platforms offering broad search functions, from Youtube to Facebook - are constantly altering and optimising their algorithms. This, in turn, means SEO practice must constantly evolve to keep pace. So, if your SEO approach hasn't been overhauled in a few years, the time has come to give it some attention. Do a review of best practice and score how you cater to SEO in your online presences. Yet, because the underlying concept of SEO has not changed, the corrective actions you need to take may not be major. Then again, they might be! It is better to know unpleasant news sooner than outright bad news later. 6. Download the right new apps The remote work trend has gone mega and this means mobile productivity apps are very much of-the-moment. See, you can get a surprising amount done with just your phone and tablet. And apps are how it all happens … plus connectivity and a full battery, of course! Usually, apps are best for keeping an eye on things, boosting effectiveness on the "busy" tasks and enabling you to give your stamp of approval to work that needs your say-so to progress. In general, these are not value-adding tasks, just the value-neutral tasks that get in the way of the value-adding tasks. Now, there is no end of apps out there. So, as always, don't bother looking until you have some idea of what you need. 7. You are the ultimate business tool Health is the single most important aspect to consider for anyone running a business. It's the non-negotiable factor that governs everything else you are capable of. To adapt a quote from Arnold Schwarzenegger, being fit and healthy is "a status symbol. It reflects you worked hard for it; no money can buy it. You cannot borrow it, you cannot inherit it, you cannot steal it". This means that you must get enough sleep every night (most people need 7 hours or more). This means a healthy diet must become your preferred way of eating. This means that you should exercise every single day (except when sick). This means you must give your mind a rest too . Meditation isn't some mystic monkish thing, it's simply the practice of letting your thoughts come and go while you - the observer - stay peaceful and undisturbed by them. Think of it like this, meditating is mediating your mind. Take stock, choose wisely, make small steps in the right direction In this article, we've talked about some improvements you can make to what you're already doing. You don't have to do all of these at once. Start with the one that seems easiest and then stick with it to see if it works. Remember, it's not always about big changes. Often, you can make major improvements in outcome by making small changes to input. Doing the little things better. So take stock, choose wisely and be sure to make those small steps in the right direction for success today, tomorrow and the next day.
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