A trade mark (or trademark, if you like) is used to distinguish the goods and services of one trader from those of another.
You still need a business name. That gives you the right to trade under a name that’s different from the name of the entity that runs the business.
What a registered trade mark does that a business name does not: prevents anyone in Australia from using a similar trade mark on similar goods and services. OK, it’s a little more complicated than that. But you can see the value in having a monopoly over the name of your hospitality business.
Whites Legal helps hospitality businesses with trade marks, including:
- Why (almost) every hospitality should register their business name as a trade mark
- Which trade marks to register
- Applying to register trade marks
- Who should own trade marks
- Protecting trade marks
- Pursuing those who infringe your trade mark
What’s the difference between a business name and a registered trade mark?
A business name is used to identify who’s behind the business. A registered trademark prevents anyone in Australia from using a similar trade mark on similar goods and services. OK, it’s a little more complicated than that. But you can see the value in having a monopoly over the name of your hospitality business. A business name doesn’t do that.
What can I trade mark?
Trade marks can be granted:
- Over a letter, number, word, phrase, shape, logo, picture, even a sound (the McCain ping) or a smell; and
- In respect of certain classes of goods and services. There are 45 classes – 34 classes of goods and 11 classes of services. We’ve outlined some typical classes that may apply to a hospitality business.
A trade mark won’t be granted if it involves something which any of your competitors’ might also want to use – like a description of what you do or what you sell. A trade mark over the word “cafe” alone in class 43 (which includes cafes) will be rejected.
Typical classes for some businesses
|Restaurants, bars, cafes||43|
|TV Shows||38, 9 (films and DVDs), 41 (entertainment)|
|Cooking schools and classes||41|
|Merchandise and apparel||24 (other textiles), 25 (clothing)|
|Crockery, cutlery, kitchen utensils||8 (cutlery, utensils), 11 (equipment), 16 (paper table cloths & paper napkins), 21 (kitchen utensils and containers), 24 (textile table cloths & napkins)|
|Alcoholic drinks (making, not selling)||33 (not beer), 32 (beer)|
|Non-alcoholic drinks (making, not selling)||32 (drinks), 30 (coffee)|
|Coffee (producing, not selling espresso)||30 (coffee), 7, 11, 16 and 21 (coffee apparatus)|
|Food (producing, not selling lunch)||5 (special food), 29 and 30|
|Retail sale of food and drink||43|
|Retailing generally (selling, not making)||35|
Protecting your name
It’s possible to sue someone for using your business’s name when you don’t have a trade mark. Doing so requires far more technical evidence, including that people recognise your business’s brand and that people have confused it with that of the other business.
If someone’s come along after your trade mark has been registered, it’s not much harder than saying that their use of a name is similar to yours. It’s a much easier claim to prosecute.
Words or logos? Both.
We recommend that businesses seek to register:
- their business’s name as a word and
- the logo of the business.
That way, the business may go after people using a similar name and after people using a similar looking logo, even if the words used are different.