“What’s in a name? That which we call a rose
By any other word would smell as sweet.”
From Romeo and Juliet (Act II, scene ii)
This is Juliet’s impassioned argument that names are artificial and unimportant and that she loves the man (Romeo) not his family name (Montague). For his part, Romeo renounces his family name and pledges to “deny [his] father” and instead be “new baptized” as Juliet’s lover.
So what, you might ask, does the love-struck poetry of two teenage medieval Italians have to do with the MICE sector in Australian business in 2008?
In these two lines Shakespeare sums up a popular and compelling philosophy: substance is more important than form; underlying reality matters more than appearance.
But while these messages ring morally true, it is a mistake not to recognise the enormous value and importance of names in business.
The paradox in Juliet’s speech is heavy – names and words do matter, both she and Romeo die because of them and Shakespeare has his place in history because of his mastery of them!
Ask yourself whether your business:
• is known for its professionalism and industry knowledge?
• is regarded as something of a leader in its industry, providing education and maintaining standards and perhaps lobbying the government?
• provides a valuable and appreciated service to its members and to the public at large?
• has a good reputation generally?
If, as I am sure is the case, you answered yes to most if not all of these questions, then your names and trade marks are perhaps the most valuable and important item on your balance sheet.
To properly understand things it is necessary to distinguish trade marks from business and company names. It is a common misunderstanding that registration of a company or business name will provide protection for the name – but this is far from the truth.
Company names are registered with ASIC to identify companies. But they are not unique and there may be many companies with similar names. The only unique identifier of a company itself (as opposed to its services and products) is its Australian Company Number (or ACN).
Business names are even more widely misunderstood. In each state the various Business Names Acts require businesses to register their names when the name of the business is not the same as the owner/operator of the business.
Many people think that by registering a company or business name some form of protection or exclusive ownership is conferred on them. But this is not the case - it is no more than a registration process so that members of the public can identify organisations they deal with.
Neither a company nor a business name confers any exclusive rights on its holder. There is no action under the Corporations Act or the Business Names Act (in any state or territory) by which the holder of a company or business name can prevent others from using the name or by which compensation can be won for unauthorised use.
To cut to the chase – only by registering a trade mark will you ever acquire any genuine degree of tangible ownership of that name.
Trade marks are, in a nutshell, “badges of origin”. They tell us, even if we don’t know who the maker or seller of the product is, that the product is the real thing, the one we are familiar with and trust.
To take that well-known brown sugary soft drink as our example, when you drink from the familiar fluted bottle, bearing the familiar names “Coca Cola” and “Coke” and the white wavy line (known, incidentally, as the “dynamic ribbon”), you associate that product with the makers of Coca Cola, whoever that may be.
You may not know that the product is bottled in Australia by Coca Cola Amatil (Aust.) Pty Limited - but you do assume that the drink will have all the usual qualities you associate with the product sourced from that “trusted” maker, whoever it might be.
This provides us with a clue to the nature – and importance – of trade marks. It is the mental association made by the consumer between the trade mark and the product that is the essence of brand recognition. If the mental association is a positive one, the trade mark has value, because it will create a tendency for the consumer to revisit the business and continue to deal with it.
This is known as goodwill. And it’s all tied up in your name and trade marks.
Just about any sign that is applied to denote the origin of goods or services is a trade mark – so it isn’t just names we are talking about here. Recall the picture of the striding figure on, for example, the Johnnie Walker scotch bottle. Such pictorial trade marks are sometimes referred to by lawyers as “devices”. The shape of the coke bottle itself is a trade mark and it’s easy to understand why the Coca Cola company jealously prevents other traders copying it. I suspect that many of us could recognise it by feel, blind-folded. It is now also accepted that scents and sounds can also qualify as trade marks.
Savvy businesses enforce their trade marks vigorously; ie they seek to stop unauthorised copy-cats in their tracks as early as possible. If you stand by while others use your trade mark without permission it may be hard to stop them later, and it only dilutes the value of your trade mark.
This should also highlight the virtues of getting a search before you start using a trade mark to ensure that you are not unwittingly infringing someone else’s mark. You’d be surprised at how many businesses get six or 12 months down the track after an expensive re-branding only to find that their sexy new trade mark actually belongs to someone else!
It’s important to note that registration is not compulsory, but is recommended. Why? - an unregistered mark can be much harder and more expensive to protect from unauthorised or infringing use by baddies. Enforcement of a registered trade mark will almost always be easier and less costly.
Registration also makes commercial dealings such as transfers and licences so much easier and more tangible.
Applications for registration are made with the Trade Marks Office (a branch of IP Australia, a Commonwealth department) in various internationally recognised categories of goods and services. It’s relatively cheap and registration takes effect Australia wide. You can do it yourself but to maximise protection and chances of success, use an experienced trade mark lawyer or attorney.
The essential characteristic required to be able to register the trade mark is that it must be distinctive. This means that the mark (say, a name) must not be descriptive of the goods or services provided and must not be a geographical place name. So, for example, if Meetings and Incentives Pty Ltd applied to register “Meetings and Incentives Sydney” as a trade mark, the Trade Marks Office would inevitably reject it for registration as being descriptive and geographical.
It is far better from the registration point of view to choose a name that is not descriptive of the goods or services your business supplies.
Also, I am aware of studies that demonstrate that non-descriptive names are more memorable and stand out more than descriptive names. Think of “McDonalds” for fast food – that name does not describe burgers or fries, but has become one of the most readily identifiable trade marks on the planet.
That’s what you want – your name to be remembered and to stand out from the pack – so avoid generic and descriptive names if you can! It may also be possible to register words that are descriptive if they have achieved “acquired distinctiveness” by presenting evidence of your use of the trade mark.
In short, you should remember that names are important and:
• make sure that the names you intend to use are unique to your business by having a search conducted before using it or spending good money on artwork and promotional material;
• register your business and company names as required;
• register your trade marks;
• use the symbol “TM” to designate a trade mark that is not yet registered and “®” where registration has been secured;
• get legal advice on proper use and licensing of your trade marks; and
• enforce your trade marks promptly and vigorously.
For further details contact
Matt Crouch on (02) 8281 7800 or email mcrouch@bartier.com.au.
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