Independent Australian coffee roasters are putting their business at risk by putting off applying to register their brand name and logo as trade marks.
Picture discovering another roaster using the same or a similar brand name, logo, product name or packaging. That could be:
- an unwitting mistake, where that business didn’t search hard enough or at all for similar names;
- deliberate, where that business is trying to hijack your reputation; or
- through brand creep, where that business diversifies into roasting, perhaps from a cafe.
There’s been a similar situation in the wine world. Consumers were confusing Crittenden Estate’s wines with Woolworths’ “Crittenden & Co” wines. That appeared to me to start with brand creep by Woolworths diversifying from a bottle shop name it acquired into wines under that label. That case seemed to resolve itself after many years with Woolworths retiring the name after a brief social media storm.
It seems to me only a matter of time before the big supermarket chains diversify into selling their own home brand coffee under boutique-looking brands.
But I have a registered business name
A business name is required where the business is trading under a name different from the name of the legal entity behind it. The legal entities include a sole trader, a partnership and a company (a “Pty Ltd”).
Relying on a registered business name provides little or no protection. Registering a business name doesn’t provide any enforceable rights. The “protection” is limited to stopping someone registering a name which ASIC’s computers considers is similar. It’s common to see businesses adding a suburb to the end of the business name to escape similarity, then exclude that suburb from the branding of its business.
Business names won’t protect a product’s name. I have a soft spot for the names of Padre Coffee’s blends, Daddy’s Girl espresso blend and Hey Buddy filter blend. Padre Coffee Pty Ltd isn’t carrying on a business under the names Daddy’s Girl or Hey Buddy. It’s not correct to register those as business names.
What protection do coffee roasters have
There’s some protection under the Australian Consumer Law and elsewhere. It’s referred to as “misleading and deceptive conduct” or “passing off”.
Pursuing either of those claims requires a lot of technical evidence, often including that:
- people recognise your business’s brand or product and that people have confused it with that of the other business; and
- there’s an overlap in the reputation or goodwill of each business.
It’s often a long and expensive claim to pursue.
So what to do? Get trade marked
A trade mark is simply something that traders use to tell consumers that anything bearing that mark is from that trader, or is similar to other things bearing that mark. But anyone can slap the TM symbol at the end of their brand name or logo. This is usually shorthand for a business asserting that they use that brand name or logo as a trade mark. It doesn’t itself mean that the trade mark has been registered.
A registered trade mark is more powerful. A registered trade mark gives the owner a monopoly to use that name on certain goods and services in Australia. It can be extended to most of the world.
Trade marks can be granted over a letter, number, word, phrase, shape, logo, picture, even a sound (the McCain ping) or a smell. Each trade mark is registered in one or more classes. There are 45 classes – 34 classes of goods and 11 classes of services.
Coffee roasters should consider registering their:
- business’ brand name;
- particularly good product names; and
- distinctive packaging.
Relevant trade mark classes for coffee roasters include:
|Coffee grinding and roasting||Class 40|
|Producing coffee beans, coffee based drinks,(different from running a café – see below)||Class 30|
|Running a coffee shop / café||Class 43|
|Making grinders and mills||Class 7|
|Making brewers, roasters, percolators||Class 11|
|Making paper coffee filters||Class 16|
|Coffee cups, manual grinders, non-electric brewers||Class 21|
You can see a more complete list by reading the general descriptions of each class (tabs at the top) and by searching for ‘coffee’ in the Trade Marks Classification Search.
What does a registered trade mark give a roaster?
A registered trade mark gives the owner a statutory monopoly to use the registered trade mark in Australia on the products and services listed in each class in the registration.
Once registered, no-one else in Australia can use the registered trade mark on the same kind of products or services referred to in the registration, or any name or logo which is similar.
Having a registered trade mark may also add value to the business when the time comes to sell or exit. Accountants and valuers like knowing that there’s an intangible asset of value and that a business will not have someone else competing using the same name.
Logo or brand name? Why not both?
Any business should consider registering both their logo and brand name. A registered trade mark gives a monopoly over the registered trade mark and anything similar – or to use the actual words, anything “substantially identical or deceptive similar”. I’ll keep using the word “similar” out of simplicity.
By registering both the logo and brand name, the roaster may have a case against other businesses using:
- a similar name even if the brand name or words used are different; and
- after people using a similar looking logo if the logos are very similar despite having completely different words.
Some roasters have distinctive product names or packaging. I’ve already mentioned Padre’s blends. Have you seen Industry Beans’ packaging?
Can roaster definitely register their brand / logo / product name / packaging as a trade mark?
Um, no. Not quite. There are rules around what can and can’t be registered as trade marks. IP Australia has a fairly detailed rundown. Otherwise contact Whites Legal, another lawyer or find a trade mark attorney to advise you.
Some roasters have names which would not easily be registered.
- Dukes Coffee Roasters will likely struggle to get their brand name registered. “Duke” and “Dukes” are common Australian surnames which other traders will want to use. It’s not impossible, but there’s a lot of additional work to be done.
- Jasper Coffee had issues registering their trade mark over their business name, which I suspect is for a similar reason as Dukes.
- Roasters whose names are directly linked to roasting and coffee will struggle. A trade mark risks being refused if it describes
Who’s doing it better already?
Some roasters have got on the front foot and registered trade marks. You can see the kinds of classes each roaster has used with each of its trade marks.
|1167162||Word||“Exploration, Adventure, Obsession in Every Cup”||30,43|
|1343108||Word||“Five Senses Coffee”||7,11,30|
|1343111||Image||5 SENSES COFFEE||7,11,30|
|1343110||Word||“5 Senses Direct Trade”||7,11,30|
What can roasters do?
- Strongly consider registering some trade marks. They’re not that expensive (starting at around $320 in fees to IP Australia).
- Consider registering the brand name and its logo, plus any distinctive product names and packaging.
- For those that have registered trade marks, vigorously monitor use by others. You want to be able to either stop someone encroaching on your brand name and logo, or perhaps try to forge an alliance.
- If someone is using one of your registered trade marks, deal with it sooner rather than later. It may be eroding the goodwill in your business and your brand. Get advice and act on it.
Contact Whites Legal with any questions or to get advice on what to apply to register. We’re happy to come to you and have a chat over one of your cups of coffee. You can contact us on (08) 6188 3340 or at email@example.com.