Case Study – “KLIKS” Dance Studio
Jane, from Victoria, had plans to open a dance studio called KLIKS. She applied for the business name and was thrilled when it was granted in the State of Victoria.
Excited by the success of her new business, she invested a large sum of money in getting a special logo and ordered expensive shop signage featuring her brand.
Business was booming and Jane was totally unaware of another existing business called KLICKS dance school which was trading in all other States of Australia. They had their trade mark registered. She was shocked to receive a letter of demand and even more surprised to learn from her lawyer when told that she would have to change her brand.
The name KLICKS has a C in it so it is different to Jane’s KLIK’s brand, but that doesn’t matter as it looks and sounds the same and confusion could arise.
While this particular case is a hypothetical, it is based on a real life scenario that I have seen happen in my legal career many times.
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Don't get caught out
The most important lesson arising out of this case study is that business name registration does not give you ownership of the name.
Company names essentially fall into a similar category in that they are procedural. With domain names - all you have is a licence to use the name of a limited timeframe – you do not own it.
The best protection that you can get for your brand is trade mark protection. There are no compromises.
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How do you “own” a brand name?
You can never own a brand name for all goods and services.
This is because it would be unfair to stop others from using ordinary words which are part of ordinary English language. For example the word DOVE is registered as trade mark by different owners for soaps, furniture and also for tissues.
Pink Lady is registered for apples, for confectionery chocolates and for landscape gardening by three separate owners.
What makes a strong trade mark?
Picnic, SOLO, lifesavers are good examples of brand names which have become well known and are ordinary English words with meanings.
Invented words are even better as they are even more distinctive. Take FANTA, Twisties, VEGEMITE and MINTIES. These brands have become icons in their own right.
Sometimes combinations work well to and make the word more registrable if they are not descriptive.
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Benefits of trade mark registration
While trade mark registration is not compulsory, it does have significant advantages. These include:
• a registered trade mark is personal property. It can be assigned or licensed to others, for
example in return for payment to the owner of the registration;
• it allows the owner of the registration to prevent the unauthorised use of the trade mark
in relation to the same, or similar, or closely related goods or services;
• it places the public on notice of the owner’s rights and provides a relatively quick and
cheap method of enforcing those rights. Generally, what needs to be shown is that the
trade mark which allegedly infringes the owner’s trade mark is “substantially identical” or
“deceptively similar” and is used in respect of similar goods or services;
• registration of a trade mark is Australia-wide;
• the application or registration of a trade mark will help to prevent other traders from
obtaining registration for a subsequently filed trade mark which is identical or similar;
• trade mark registrations can be perpetual as they can be renewed indefinitely; and
• registration entitles you to use the “®” symbol to put the public on notice of your trade
mark rights.
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Searches
When you have a new trade mark it is important to do checks before using it, as if someone else has it they have prior rights at law to you and will be able to prevent you from using the name. These are best done by a lawyer but a good starting point is internet searches which are easy to do.
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Valuable lessons to be learnt out of the above:
• First, always check whether someone is not already using a name before you begin using
and investing – thorough trade mark searches and other marketplace should form part of
this check;
• Second, remember that business names, company names and domain names do not give
you any ownership rights of the names; and
• Third, if you have a distinctive name for your business or goods or services, you should
strongly consider registering it as a trade mark.
This is a complex area of the law and it is recommended that you therefore seek the advice of a lawyer or trade mark attorney.
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*Sharon Givoni is a branding and advertising lawyer and principal of Sharon Givoni Consulting. She can be contacted on 03 9527 1334 or emailed on sharon@iplegal.com.au. Her website is located at www.sharongovoni.com.au.
Disclaimer - This article is a summary only of the topics covered and must not be relied on as a substitute for professional legal advice specific to your circumstances.
Copyright Notice - Copyright in this article is owned by Sharon Givoni. For permission to reproduce it in any way whatsoever including online or in print, please contact Sharon Givoni on 0410 557 907 or via email at sharon@iplegal.com.au
