Do you need to trade mark your media title or masthead?

Do you need to register or trade mark your media title? The short answer is no, you don’t need to. But should you? Your brand may not be adequately protected if you don’t, leaving you open to imitation or misrepresentation. Let’s look at some basics of Australian trade mark and consumer law.

I’ve worked with many publishers that haven’t registered a trade mark for their media brand for various reasons: “If an issue comes up, we’ll fight it in other ways”, “It’s too much hassle”, “I’m too small, too niche – no one is going to copy my brand or idea”. 

And to be honest, I never thought much about it. But then I received a call that led me to seek legal advice, and ultimately rebrand the Niche Publishing Network to the Targeted Media Services Network. More about that here. 

My experience taught me that, if you don’t have a registered trade mark, you’re left open to imitation or misrepresentation – and while there may be other options for recourse, they’re not as straightforward as you think. 

Why is it important to protect your media brand? 

Your media brand and its marketing elements that make up your unique selling proposition are intrinsically tied to the value of your business. 

Your name, logo, masthead, slogans, design elements help your subscribers and advertising clients easily recognise and identify with your brand, and are synonymous with the reputation that you’ve built up over time. 

Making sure that you adequately protect your media title’s masthead and branding elements helps to reduce your competition in the marketplace or differentiate your offer in heavily competitive markets.  

Providing adequate protection for your brand and masthead can also enhance the value of your title when the time comes to sell, as mastheads (and any related trade marks) are considered intangible fixed assets.  

What is the difference between registering a business name and a trade mark? 

Business names are used to identify your business, trade marks are used to identify the products and services you sell. 

Business names are a legal requirement and the name that you trade or operate under. They must be registered with the Australian Securities and Investments Commission (ASIC) and be held or owned by a legal entity such as a company, partnership or individual. 

A company, partnership or individual can own and operate several businesses trading under different registered business names. But registering a business name doesn’t give you exclusive ownership over that name, or stop others from registering a similar name. 

Trade marks are not a legal requirement. Instead, they are a choice that’s made as part of your branding strategy to help distinguish your offer in the marketplace. A trade mark gives you intellectual property rights in the item or aspect that’s been registered. 

There are many different aspects of branding that can be trade marked, including any letter, word, name, logo, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, slogan, sound or scent – or any combination of these (as outlined in Section 6 of Trade Marks Act 1995 (Commonwealth)).

Business names, company names or domain names aren’t trade marks unless they’ve been registered as such. 

For example, a registered business or company name gives the owner the right to use the name to trade under, but that right is subject to the intellectual property rights of others who may have registered the name as a trade mark. 

Similarly, purchasing a domain name gives the owner exclusive use of that internet address for an agreed period of time. But no intellectual property rights in the name are gained through domain name registration. 

What is the difference between registered and unregistered trade marks? 

The term trade mark refers to the signs that you use to distinguish your offer from others, and can exist regardless of if it has been registered. 

Unregistered trade marks are determined by demonstrating that your offer has sufficient reputation in the market, and the mark is sufficiently recognisable as your brand. 

Unregistered trade marks have some level of protection under Australian Consumer Law (ACL), but IP protections under the Trade Mark Act only come into play once a trade mark is registered with Intellectual Property (IP) Australia.

Registered trade marks appear on a public register, which can be searched by others who wish to see if others are already using a particular mark. 

Once a trade mark is registered, you have exclusive rights to use the mark in the category for which you registered the mark (more on this below). Others can’t use a mark that is identical or “deceptively similar” to your trade mark without your authorisation. 

What protection do unregistered trade marks have under Australian Consumer Law? 

To prevent others using your unregistered trade mark under the ACL, you must show that the unauthorsied use would mislead or deceive consumers.

The ACL also allows recourse for a brand ‘passing off’ as another. Passing off protections are designed to protect the goodwill and reputation of a business built up by the use of an unregistered mark or name from misrepresentation. 

It stops others from gaining a commercial advantage by taking attributes (advertising slogans, images, etc.) from your successful business. 

To succeed in an action for passing off you must determine: 

• That you have built up sufficient reputation or goodwill on the part of the business; 
• That the other party has participated in deceptive conduct on the part of a trader; and, 
• That this deceptive conduct poses a threat or damage to your business. 

Proving these three elements within a passing off claim can be complex and expensive. 

Internationally, there have been cases where magazine publishers have battled passing off cases with varying results. 

In the UK, the publisher of Southern Farmer Magazine brought a passing off case against the publisher of South East Farmer with no success, however the publisher of Computeractive magazine was successful in its claims against a newly launched magazine at the time, Web User. These case studies outline how difficult establishing passing off can be, and the number of factors involved.  

Important considerations when registering for a trade mark  

Compared to unregistered trade marks, protections under the Trade Mark Act provide you with greater rights and are usually easier to enforce. For this reason, most businesses seek to protect their intellectual property rights by registering trade marks. 

Legal services usually recommend that, if your trade mark is an essential aspect to your business – like a media title or magazine masthead – you should make sure it is sufficiently protected. 

But here’s where things get a little trickier. 

Once you’ve decided to register a trade mark, you need to determine what category or class your product or service relates to. It’s important to put some thought into this because your trade mark will only be protected in the classes that you register it against, and you can’t change these categories once submitted. 

IP Australia provides a picklist of 60,000 goods and services divided into 45 classes (or categories). You can choose multiple classes to cover as broad an area as possible, but a fee is payable for each class that you register. 

IP Australia suggests asking the below questions about your business activities: 

• Where do you derive your business income?
• What is the nature of your business?
• What are you known for by your customers/clients?
• What products or services does your business provide?

As an example, a B2B media title that bears the same name as its publishing company, and includes a print and digital magazine, news content produced on its website, and brand extensions including a podcast and an exhibition may wish to register under the following classes: 

To get an idea of how other media titles or your competitors have categorised their goods and services, you can search and view IP Australia’s registered trade mark database.

Make sure you are adequately protected 

Your brand identity is a valuable asset and should be protected. 

In TM.SN’s case, I was the offender – accused of passing off on another publisher’s reputation (which certainly wasn’t intentional). The legal advice I received before rebranding was that it did not appear that I was in breach of any trade mark rights, and it would likely be difficult for the other party to make a passing off claim against me. 

But the possibility of a lengthy and costly legal battle with a company that was in the industry that my website aims to support was enough to deter me from continuing with TM.SN’s former brand. Other offenders may not concede so easily. 

For TM.SN, I’ve been able to turn the experience into a positive – using it as an opportunity to clarify and define the website’s purpose and how it helps media businesses with targeted audiences. Kudos to the publisher who felt that my former brand was too close to theirs. A brand identity and reputation built up over time is worth fighting for. 

For more information on trade marks and how to register, visit the IP Australia website.