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Charities & Not-For-Profits Law in Australia

Trade Mark Protection – 5 Points Every Charity & Not-For-Profit Organisation Should Consider

Posted in Liability & Risk, Protection, Trade Marks

As a Charity and Not-For-Profit (NFP) you rely heavily on the goodwill and reputation of your organisation which could take years of effort and investment to build.  It is therefore crucial for you to protect your names and brands, and this can be achieved by way of trade mark protection.

A trade mark is a “badge of origin”.  It is a way of distinguishing one trader’s business, goods or services from another.  An organisation’s name could potentially be a trade mark, as could its logo or the names of their goods or services.

If you are thinking about registering a trade mark for your Charity or NFP, we recommend you consider the following five points.

1. Why register a trade mark in the first place? 

A registered trade mark grants the owner certain exclusive rights pursuant to the Trade Marks Act.  You can use the trade mark for the goods and services to which the mark is registered and potentially stop others from using your mark or a mark that is deceptively similar.  Your registered mark will also prevent others from registering an identical or deceptively similar name as a trade mark in the same classes of goods and services.   Furthermore, a registered trade mark is also a piece of valuable intellectual property that charities and NFPs can utilise, including licencing to third parties.

When you have registered a trade mark, you can legally attach the symbol “®” next to the mark, to show the public that it is a registered trade mark.

2. I already have a domain name and/or registered a business name, do I still need to register a trade mark?

Domain names and business names have nothing to do with trade marks and give no trade mark rights or protections.

It is not a legal requirement to register a mark or name as a trade mark.  Others are not allowed to use your business name as their own without your permission and this is known as “passing off”.  However, while it is possible to protect your brand without registering the mark as a trade mark, it is often more difficult and expensive in the long run to run a passing off claim against third parties.

3. What should I register as a trade mark?

It is recommended that the name and logo associated with the name of your organisation should be registered as separate trade marks.  The trade mark of the name would be a word mark, whereas the logo would be an image mark, that would likely have distinctive graphics or symbols, layout and usually also the name of the organisation.

If your organisation operates ongoing services, recurrent events or produces certain goods with a distinctive brand or name, and you wishes for such brands to be protected, we recommended that you register the names and logos of such brands as trade marks.  For example, “CEO Sleepout”, being the name of a well known annual fundraising event to assist the homeless, is a registered trade mark owned by St Vincent de Paul Society National Council of Australia Inc.

4. Can my mark(s) be registered?

For a mark to be registered as a trade mark, it has to be “capable of distinguishing”, which means the mark has to be capable of distinguishing your goods and services from those of another trader.  Distinctive names, such as those containing made-up words (e.g. “Google”), portmanteaus (e.g. “Citibank”) or words that don’t relate to the goods or services (e.g. “Apple” for computer products), are easier to register as trade marks as they are capable of distinguishing the goods and services to which the name relate.

On the other hand, descriptive names would have a harder time being registered as a trade mark.  A name that is very descriptive of a good or service, for example, the name “Diabetes Awareness Fundraiser” as the name for a diabetes awareness fundraising event, is not distinctive and would have a hard time being registered as a trade mark.

When IP Australia examines a trade mark application, if it determines that the mark is not capable of distinguishing (or if there are any other issues, such as being too similar to an existing registered trade mark), it will issue an adverse report identifying the problems.  If the issues raised in the report are not overcome then the application will lapse and the mark will not be registered.

If your organisation is in the process of creating the brand for a new service or product, or it wishes to rebrand, we recommend that you consider obtaining legal advice before committing to a new name or logo, to see whether there may be any trade mark issues associated with registering the marks.

5. How do I register a trade mark?

Registration is carried out through IP Australia.  An application for trade mark is submitted to IP Australia along with the associated application fee.  An examiner will consider the application and either issue an adverse report if he or she determines that there is one or more issues with the application or else accept the application.  The accepted mark will be advertised for 2 months and if no opposition to registration is received from the public, then the mark can be registered once a registration fee is paid.

From 10 October 2016, there will be changes to the fee structure, with an increase to application fees payable but the removal of the registration fee.

It is important to get the application right, as once an application is submitted, it generally cannot be varied.  If a mistake is made, the process needs to be restarted and extra fees may need to be paid.

Given their reliance on goodwill and reputation, charities and NFPs should strongly consider protecting their brands through trade mark registration.  In the process of registering a trade mark, legal advice should be obtained to ensure that trade mark applications are drafted properly and they cover the right classes of trade mark.  Legal advice should also be obtained to deal with any adverse reports issued by IP Australia during the application process.