MYOB Practice


17th August, 2023

Make sure your brand doesn’t infringe on an existing trade mark

Branding is critical for your business as it helps attract customers and distinguishes you from your competitors.

When establishing your brand, it’s important to check that your name, logo or other element of branding isn’t already trade marked by someone else.

Trade mark infringement is the unauthorised use of a registered trade mark and can result in costly legal fees and a need to rebrand. Here’s what you should know and some key steps you can take to avoid trade mark infringement.

What’s a trade mark?

A trade mark protects your company’s unique brand, product or service and helps build a memorable customer experience that can generate repeat business.

The most common trade marks are brand names, logos and distinctive phrases, but they can also be a word, letter, colour, sound, smell, picture, movement, aspect of packaging or any combination of these.

Risks of no trade mark protections

If you register a trade mark with IP Australia, the government agency that administers intellectual property rights, you’ll gain:

  • exclusive rights to use that trade mark as your brand in Australia
  • the legal right to place the ® symbol next to your trade mark
  • a legal avenue to prevent others from using your brand to trade similar goods and services
  • a new asset that helps increase the value of your business
  • brand protection for an initial period of 10 years, which can be renewed indefinitely.

How do I avoid infringing on an existing trade mark? 

No business wants to face the cost of a rebrand or infringement action, but the reality is that it can happen, and the risks are real. Research has found:

A lot can be learned from the experience of Sydney restaurant – Fat Duck, which opened its doors in Sydney in 2011.

Shortly after opening, the restaurant was required to relinquish their name and rebrand their business because celebrity chef, Heston Blumenthal, filed an application for trade mark protection.

Intending to reserve the Fat Duck name for his chain of fine dining restaurants, Heston’s company filed a claim in the Federal Court of Australia and won.

This story demonstrates why you should check your intended brand early, and how, if you haven’t protected your name or logo against competitors, you may risk losing the rights to it.

Take the steps below to make sure you’re protecting your brand.

Search trade marks with TM Checker

It’s important to search through existing trade marks to:

  • avoid infringing on someone else’s trade mark
  • check your trade mark is available for registration
  • minimise the chance of someone objecting to your trade mark application
  • address potential conflicts with similar registered trade marks before you invest time and resources into building your brand. 

You can use IP Australia’s free tool TM Checker to search registered trade marks. An initial check only takes a few minutes and is free.

TM Checker will show you anything already registered that might be like your name, phrase or logo in the proposed classes you’ll use your trade mark for.

If your check confirms your proposed trade mark is available, you can easily apply to register it at the same time.

If you decide to apply, it can cost as little as $330. Watch the short video above for guidance on using TM Checker.

Consider registering your own trade mark

Once you’ve completed a search and determined that your proposed trade mark is available, consider registering your own trade mark.

As mentioned, you can apply through TM Checker at the same time as your check, or return to do it later.

Be sure to avoid these common mistakes when registering your trade mark:

  • applying for a trade mark that is too generic, such as descriptive words or a single colour
  • applying for a trade mark that might offend the general public
  • selecting the incorrect classes of goods and services that you’ll use your trade mark for.  

What are the benefits of registering my trade mark?

Apart from the peace of mind that comes with legally protecting your brand, research by IP Australia found these other important and compelling potential benefits:

  • a business with a registered trade mark is 13% more likely to achieve high turnover growth
  • after filing for an intellectual property (IP) right, such as a registered trade mark, small to medium enterprises (SMEs) are 16% more likely to experience high employment growth compared to businesses with no recent IP filings
  • for businesses launching products, each additional registered trade mark is linked to an 8% revenue increase per employee
  • applying for a trade mark is linked to an increase in start-up valuation
  • SMEs that own IP rights, on average, employ 3.5 times as many people as their peers with no IP rights and pay a higher median wage.

If you’d like to read more, IP Australia has loads of information for small businesses about trade marks and other important intellectual property rights.