Business Branding and Marketing – Standing out (safely) in a very crowded market place

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It’s important to stand out

The success of a business has as much to do with customer brand recognition, as it does with the quality of the goods and services being offered, and price point.

Marketing in the modern digital age goes much further than placing an advertisement in the local paper. For maximum reach, modern business enterprises need to rely both on traditional forms of marketing, and also increasingly on electronic marketing using interactive websites, email, social media and telemarketing.

But do it safely

Many new forms of marketing are specifically regulated by Australian law, such as:

  • Spam Act 2003 (Cth) which prohibits the sending of certain types or unwanted or malicious electronic messages (including email, SMS and instant messaging); and
  • Privacy Act 1988 (Cth) which regulates the use and disclosure of personal information.

All advertising and marketing claims will be subject to the consumer protection provisions of the Competition and Consumer Act 2010 (Cth)(‘The Act’) which prohibits the making of false and misleading statements, bait advertising and component pricing (amongst other illegal forms of conduct). The Australian Competition and Consumer Commission (ACCC) will actively investigate and prosecute breaches of this legislation.

Look before you brand

With so much information being received by prospective customers every day, having a distinct and recognisable brand may be the difference between making a sale and losing it. Most businesses understand this well, and invest significant amounts in branding and marketing, but where they commonly fail is by rolling out a brand that is already being used by competitors, does not stand out, or is not capable of being legally protected.

Aim to have the brand form part of your business, company and domain names, and also your key trade marks. This helps to ensure continuity and reduce consumer confusion.

The first thing to do after deciding on a brand you would like to use in connection with your business is to carry out some due diligence. This is primarily done by undertaking:

  • trade mark searches on IP Australia (and overseas if you intend to operate in other countries);
  • ASIC business and company name searches;
  • domain registry and .au Domain Administration searches; and
  • internet searches.

Prevention is better than legal action

The purpose of searching before launching your brand in the market is to check whether it would infringe any existing trade mark rights, or rights arising at common law or under the Act. It is also an opportunity to check the availability of your brand for trade mark registration.

If these searches are not undertaken, there is a risk that significant time and resources will be wasted in the development and commercial exploitation of your new brand if it is later challenged by a third party. Unfortunately, many businesses learn this lesson the hard way.

Protect your key brands

We recommend that key brands be protected by registering them as trade marks in Australia, and also in foreign countries if you intend to sell overseas. You can trade mark a wide range of representations of your brand, such as: words (in plain or ‘fancy’ font), phrases, letters, numbers, logos and pictures. It is also possible to trade mark shapes, sounds, scents, movement and colour.

Although there is no requirement to register a trade mark, by doing so you obtain these benefits:

  • you can prevent others from registering the same or a similar trade mark in relation to your goods and services;
  • a registered trade mark is on the public record, and because it can be identified by searching, may act as a deterrent to others who may be considering adopting the same or a similar trade mark;
  • the rights of the registered trade mark owner extend throughout Australia (and also potentially overseas if registration is obtained in foreign countries) for 10 years;
  • a registered trade mark is an asset that can be sold, licensed or used as security; and
  • if you need to protect a registered trade mark in enforcement proceedings, there is no need as owner to establish either a reputation in the trade mark, or that use of the infringing mark is likely to confuse or deceive consumers.

Registration is also very affordable.

Relationship between business, company and domain names, and trade marks

Confusion exists between the registration of business, company and domain names, and the registration of trade marks.

If you wish to trade under a business name (other than your own name), then you will have to register your business name with ASIC. The purpose of this process is to allow the identification of the person behind the business name. The company name allocates a unique name to a corporation. The domain name is your website address which gives you an online identity or brand.

The key point is that registration of a business, company or domain name does not confer any enforceable rights on the business name owner or company in the way trade mark registration does. Trade mark rights are acquired either by registration, or as a consequence of using an unregistered mark over time by which it obtains an established reputation.

For further information, please do not hesitate to contact us.

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    Commercial Disputes

    TSG Franchise Management Pty Ltd v Cigarette & Gift Warehouse (Franchising) Pty Ltd (No 2) [2016] FCA 674