The ‘whopping’ Importance of Trade Marking your Brand

What is a trade mark?

A trade mark is a sign used to distinguish your goods and/or services from others in the marketplace. It is your badge of origin and identity to customers and will commonly include business names, product names, logos and taglines/slogans. 

For example, when it comes to iconic brand logos, think the McDonald’s golden arches:

How about the Nike ‘swoosh’ which graphic design student Carolyn Davidson was paid $35.00 to design in 1971 and which is now said to have a worth of $26billion alone:

Did you know that the following are registered trade marks?

• The ‘Tiffany blue’ colour synonymous with Tiffany & Co jewellers:

• The ‘Happy Little Vegemites’ jingle.
• The Toyota jump trade mark, described to consist of the silhouette of a woman leaping into the air from a standing start extending her arms up above her head and pulling her legs up behind her by bending her knees at the same time:

Going back in history, the first registered trade mark in Australia was in 1906 for ‘PEPS’, a product for coughs, colds and bronchitis:

Why should you obtain a registered trade mark?

Firstly, a common misconception is that a trade mark is the same thing as a business, company or domain name. This is not the case and registering those names does not afford you any ownership rights in those names or the exclusive right to use those names in trade.

Instead, such benefits come from obtaining a registered trade mark with Intellectual Property Australia in accordance with the Trade Marks Act 1995 (Cth). 

Set out as follows are five (5) reasons why you should consider obtaining a registered trade mark for your valuable brands:

1. Registration gives you the exclusive right to use your trade mark for your goods and/or services and to build and develop your brand knowing that you own and have the sole right to that brand.
2. You can commercialise your brand. For instance, a registered trade mark is a recognised intellectual property asset of your business, making your business more valuable for prospective buyers and also allowing you to licence those trade marks to others.
3. It is legally enforceable, meaning it is easier to take action against others who are infringing your trade mark without your permission or who are using a trade mark that is similar to your trade mark in relation to the same or similar goods and/or services. 
4. It reduces the chances of another person attempting to pass off your brand as their own.
5. Courts generally look more favourably on registered trade marks as opposed to unregistered trade marks.

Fun fact: Although operating in different markets, the World Wildlife Fund (WWF) leveraged its trade mark rights to force World Wrestling Federation to change its branding to World Wrestling Entertainment (WWE).

Is your brand still protected if you do not have a registered trade mark?

In short, yes as trade marks exist whether or not they are registered. However, the level of protection and benefits afforded are limited when compared against registered trade marks.

When it comes to deciding whether or not to register your trade marks, you should consider the following in favour of registered trade mark protection:

1. Registered trade marks offer you protection from infringement by giving you the exclusive right to use the trade marks.
2. If you rely on your unregistered trade marks, you will have less rights, benefits and protections and will be involved in lengthy and costly legal action to attempt to prove and enforce your rights.
3. If you do not register your trade marks, you are exposing yourself to the risk of others infringing your trade marks and possibly even registering those trade marks themselves, making your enforcement and claim to ownership significantly more difficult.

The ‘whopping’ power of registered trade marks: Burger King

The battle of the burgers

In the early 1970’s, the American Burger King Corporation and Canadian-Australian businessman and entrepreneur Jack Cowin teamed up to bring ‘Burger King’ to Australia (Burger King Australia). Under that arrangement, Mr Cowin would own and operate the Australian master franchise of Burger King and sub-licence the franchise to other Australian third party franchisees.

Little did Burger King Australia know that entrepreneur Don Dervan had been operating a chain of ‘Burger King’ restaurants in Adelaide since the early 1960s. More importantly, Mr Dervan had registered the Burger King trade mark in Australia.

Upon becoming aware of this, Burger King Australia attempted to buy the trade mark from Mr Dervan, but was not successful. This left Burger King Australia ‘in a pickle’ in that it either had to select a new name or otherwise risk legal action being brought against it if it chose to operate as Burger King, a blatant infringement of Mr Dervan’s registered trade mark.

Burger King Australia eventually settled on operating in Australia as ‘Hungry Jack’s’.

What is the takeaway?

The battle of the burgers highlights the importance and power of registered trade marks in preventing infringement of valuable brands and allowing a business to exclusively use and protect its brand in the marketplace. Mr Dervan’s ownership of the Burger King brand prevented Burger King Australia from entering into the market under that brand and granted Mr Dervan the benefit of continually and successfully operating his business free of infringement.

However, had Mr Dervan not had the recognised proprietary right to the ‘Burger King’ trade mark in Australia, Burger King Australia may have been more inclined to operate under the Burger King brand, trade mark the brand and then sue Mr Dervan for infringement of Burger King Australia’s intellectual property, which would in turn have likely led to lengthy and costly legal action in each party attempting to provide their claim to the brand.

Key takeaway: Register your trade marks

The key takeaway of this article is to ‘relish’ the moment and ‘set your mind at cheese’ by registering your trade marks with IP Australia so that you maximise the protection, benefits and commercial advantage of your trade marks.

If you would like advice or assistance in relation to trade mark matters or any other commercial law matters, please contact our Commercial Law Associate, Josef Ferraro on jferraro@marsdens.net.au or otherwise by calling him on (02) 4640 4377.

The contents of this publication are for reference purposes only. This publication does not constitute legal advice and should not be relied upon as legal advice. Specific legal advice should always be sought separately before taking any action based on this publication.