Lost on translation
Wednesday, September 26, 2007/
Your name, and your brand, can be rendered useless if you head overseas without checking, and registering, first.
Many small business owners don’t realise the importance of protecting their names and logos by registering trademarks in Australia. An even greater number make the mistake of registering trademarks locally but not looking at the bigger picture and ensuring that they are protected in their exporting ventures.
If you don’t, someone else may register your name first – or worse, you may inadvertently breach someone else’s trademark.
The practical implications are also pretty grim, and include dilution of the brand you have spent years building up in Australia. The cost of re-branding for overseas markets can also be very high. Some businesses re-brand for overseas on purpose, because of cultural sensitivities and other reasons, but most would tell you that if they could have avoided it they would have.
“Ugg”, an Australian icon brand, lost a battle with a US company that had registered “Ugg” as a trademark in the US. Lenny, a fashion label, has recently had to change its name to Saint Lenny for the overseas market.
International trademarking can be very expensive, but the key is to be strategic in relation to the countries and classes you register in.
The Madrid Protocol, an international treaty on intellectual property rights, has made international trademarking easier as you no longer have to apply to each individual country’s trademark office. You can do a multiple country application from Australia and pay the fees in Australian dollars.
A couple of tips for aspiring exporters:
- When developing a business name, logo, packaging, etc, get legal advice in relation to the trademarking potential of it before you settle on your final choice. Your lawyer or qualified search staff at IP Australia can conduct searches of trademark databases to tell you if you will be successful in registering your trademark, and your lawyer can advise you as to which classes of goods and services you should register in.
- If you have any visions of exporting at all, this is the time to get searches done of international trademark databases as well. You can do some of the groundwork and start looking up Google to see if others around the world have the same name as you.
- Make a decision as to which countries you really want to get into and get a quote on how much it will cost to register your trademark in those countries. IP Australia has a calculator under the international trademarks section that will give you an idea of costs.
- Be strategic in relation to the countries you choose. You may not care if someone opens an ice cream shop with the same branding as yours in Puerto Rico, but you may care if they open one in San Francisco.
- Be strategic in relation to the classes you choose. If you are doing shampoos today, will you be doing candles and body lotion and dressing gowns tomorrow? Pre-empt your expansion and register to cover it.
I had a client who recently spent almost $15,000 registering one logo in eight classes in the US, EU and Japan. This might sound expensive to you, but think about the amount of money you might spend attending one international trade show to tout your product – and then think about this story from my X-Files (X for Exporter!)…
A client of mine who designs and manufactures outdoor lifestyle accessories decided against international trademark registration but spent a hefty sum to fly over to a German trade show to show its new range of carry bags.
They had lined up meetings with potential buyers and were very excited at the prospect of exporting. To their dismay, two stands down from theirs was a German company with exactly the same name as theirs, which also manufactured bags (leather ones, but bags nonetheless).
The German company had a registered trademark for the whole of the EU and threatened my client with legal action and an injunction if they did not cease to use their name during the trade show and anywhere else in the EU. My client had to cover up their brand on their stand and all their products for the duration of the trade show and incurred legal fees defending the threatened injunction.
Suffice to say, the trade show did not bring much business.
This mishap could have been avoided by conducting a simple search of the EU trademarks database and perhaps the money spent on the show could have been spent on other aspects of the business.
Lynda Slavinskis is an outgoing, intuitive and commercially savvy lawyer. She has worked in-house at Sussan Corporation and Tattersall’s and now assists small and medium businesses with import, export, leases, franchising, employment and general business advice as principal solicitor of Lynda Slavinskis Lawyers & Consultants. Lynda is on the Victorian Government’s Small Business Advisory Council.
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