Business booming online – don’t forget your Trade Mark!

I recently had a client request the registration of a word and logo trade mark for his online retail distribution business. The client had already invested a significant amount of time and resources. Harnessing his social media skills, the business prospered on social media and gained partnerships with top tier clothing brands.


Not only had my client already registered a business, domain and company name, but also invested significant costs with a web developer in establishing the business website.


Upon conducting preliminary searches of the trade mark database, it was determined an online retail business had registered a trade mark 10 years earlier with a similar name. Despite being operational at a very small scale, the registered trade mark conferred Australia-wide protection.


Accordingly, even though my client’s business had been operating for some time, it was clear that a trade mark application would result in an objection from IP Australia and possible legal battle down the road. Ultimately, it was fortunate the issue was caught early and my client chose to slightly alter the brand name which resulted in a successful trade mark registration.


The key take-away from this case is that while there are key steps in setting up an online business arguably the most important of those is protecting your intellectual property at the earliest stage by registering your trade mark.


How can I help? At the initial stage I will conduct preliminary searches of the trade mark and advise you if there are any grounds for opposition to registration. Should there be grounds, I will advise you the best avenue to oppose and what evidence may be required.


If you have any questions about the registrability of your trade mark, or other issue regarding your intellectual property, call me for a free case evaluation.

By Angus Ferguson,
Associate Solicitor