Trade marking: know where your department stands

As we get deeper into the information economy, protecting public sector brands and trade marks is more important than ever.

While most businesses realise the importance of trade marking, public sector organisations may not. Maddocks partner Brendan Coady has handled trade mark issues across a range of government departments and agencies, and has found trade marks have equally important value in the public sector.

“Private companies are interested in building value in brands and exploiting them commercially,” explains Coady.

“That is often less of an issue for public sector organisations, but there are other equally important considerations.”

What do trade marks allow?

Because trade marks give an organisation a proprietary right in a brand or name, they prevent other entities from using that name or mark, or something that is similar.

“So the government organisation can use trade marks to make sure that if they’re establishing a brand which they’re trying to use to provide a public service,” says Coady, “they’re able to stop other people from trying to appropriate the value in that name.”

He warns that if departments don’t take appropriate steps to register those names, there’s always the risk that other unscrupulous organisations are going to try to trade off the good will for that brand. Failing to trade mark intellectual assets, Coady says, can also create confusion among the public about what products or services in the market are supported by the government. Simply acquiring a business or domain name, he explains, will not sufficiently protect a brand.

“Trade marks are really the only thing that will give you the right to stop other people from using that mark or anything too similar to it.”

Likewise, going through the trade marking process will also ensure a particular brand or name is available to use.

“Public sector organisations spend a lot of time developing a new name and brand,” explains Coady. It would be unfortunate to discover that someone else has prior right to that name, and that they are not able to use it or obtain registration to protect it. The rebranding exercise that follows can be a very expensive process for government organisations.

Trade marking a public sector brand

The first step to trade marking a brand is finding out whether its name or logo has already been registered for use, Coady explains. Next is to determine how the mark will be used, as trade marks are registered in accordance with an international classification system of products and services known as “classes”.

After a trade mark application is submitted to IP Australia, which oversees Australia’s intellectual property system, the body will decide whether the trade mark is sufficiently distinguishable from others on the Trade Mark Register and in the market.

“Assuming it’s accepted by IP Australia, there’s a process where the application is advertised, and other parties can oppose it,” says Coady. If those hurdles are cleared, the mark will proceed to registration.

If the process seems long and complex, it’s because a trade mark is one of the most robust protection mechanisms for intellectual property, explains Shelley Einfeld, a consultant at Maddocks and senior trade mark lawyer.

“What you’re getting is a monopoly right,” says Einfeld. “Once the trade mark is registered, you have the exclusive right to control its use and prevent others from using it without your permission. The initial registration period is for 10 years but it can be renewed every 10 years indefinitely..”

Trade marks in the international space

The emerging international digital economy is introducing issues for trade marks. The physical location of a particular agency or enterprise, says Coady, is becoming less important as people consume services or products over the internet.

For example, an Australian government agency might want to trade mark a particular name. While that name may be available on the Australian Trade Mark Registry, an overseas business with the same name may be active and well-known in Australia, due to the internet.

“That might be an impediment in the market in Australia, or create confusion.”

In most cases, Australian government organisations may not be too concerned about registering their trade marks in other countries, explains Einfeld. But certain bodies – especially those that are internationally active, like Tourism Australia – may have to familiarise themselves with the idiosyncrasies of international trade marking systems.

“I’ve worked with a NSW state government agency that spent a lot of time and money developing innovative new software that had wide applications for other governments, both in Australia and internationally,” she notes.

“More and more, we’re seeing joint activity between government and private enterprise,” notes Einfeld. Those enterprises, with the government’s support, may create a product that has an application beyond domestic borders, where international trade mark protection would be appropriate.

How to keep up

To save time and money, it’s vital that government agencies ensure their trade marks are cohesive and up-to-date throughout their entire organisations, advises Einfeld.

“There’s no use spending money to renew trade marks that have fallen into disuse,” she says, having seen departments pay to renew old, unused trade marks but not register new ones they are actually using. Not only should organisations conduct research into relevant trade marks before launching new brands to make sure they are available for use, but they should also regularly audit their trade mark portfolio to make sure that their most valuable brands are adequately protected.

Unfortunately, private companies often handle trade marks more efficiently than the public sector, notes Coady.

“Generally, in a large commercial organisation, there’ll be one part of the organisation that will be responsible for managing trade marks and branding,” he says. “And they’ll typically have a style guide, which is quite strict in terms of how you’re using a particular trade mark or logo.”

A cohesive system ensures there is a consistent perception of the brand among the public, but it also saves businesses from confusion internally. Public sector organisations, notes Einfeld, sometimes stumble due to their complex structures.

“In a general sense, you’ve got some government departments and sub-departments,” she says. “We’ve seen trade marks that aren’t all held by one department but sub-departments, so related trade marks aren’t consolidated with one entity.

“So that makes it a little challenging to figure out who owns what and who has ownership rights.”

The trade marking process, says Einfeld, “is one that continues to become all the more important”, to businesses, the public sector and taxpayers.

“The assets of companies are more and more in their brand and trade marks rather than in their fixed assets.

“Taxpayers have an interest in making sure the government protects their assets.”

Written by: Jessie Richardson