What's in a name? Choosing a Trade Mark

by: Joanne Martin

Juliet asks "What's in a name?" (Romeo & Juliet, Act II, Scene II). The name of your winery, the name of your product: these are important assets.  This article looks at product names, also called trade marks. These are the words, logos and images which appear on your labels, in advertising material, on your website, point of sale materials, and in advertisements.

For many consumers a trade mark can be the hook that creates the purchase.  Because of this, from a marketing perspective, trade marks are as important as the quality of the wine in attracting customers. The right trade mark will help distinguish your products in a sea of competitors' products and provide your customers with a reason to purchase your product.

Finding the right mark to convey your marketing message is an art, it requires creative flair.  However using a trade mark also gives rise to legal obligations, risks and rights.  Because of this, the following matters should be kept in mind when deciding on a new mark for your products:

1. Choose a "strong" mark.  From a marketing point of view a strong mark is one which differentiates your wine from that of your competitors, as well as providing the marketing message you wish to communicate to customers.  From a legal point of view a "strong" mark is a registrable mark, allowing you to obtain rights to exclusive use of the mark across Australia, as provided by  the Trade Marks Act.  Therefore, when choosing a mark, avoid descriptive or laudatory words, common surnames, geographical names,  any words or images which other traders commonly use to describe or promote their wine.  "BUBBLY" may be a good trade mark from a marketing point of view for your sparkling wine, at least in the short term, but is a word which could be safely used by competitors, eroding your market niche and allowing others to take advantage of your marketing efforts for that product. Have a chat with your Trade Mark advisor in the early stages about what type of mark you are considering.

2. Make it memorable. A trade mark needs to create a positive association between the name and the product, it is the shorthand for the marketing message you wish to convey.  It needs to be memorable to help customers remember and find you.  Marks which are cute, funny or aim to shock may be memorable, but won't necessarily create positive associations in the mind of the consumer.  Invented words can be problematic from a marketing point of view, even though they are good marks from a legal point of view. Most marks combine words or parts of words that suggest positive qualities of the product, or are words which are memorable and pleasing, but are quite arbitrary, such as YELLOW TAIL or MAD FISH.  The story behind the creation of the MAD FISH label by Maxine Fumagalli is interesting, with its links to the region where, legend has it, the fish "go mad' at certain times of the year.  The attractive label won a double gold medal and was listed in the top four labels from around the globe at the International San Francisco Wine Competition.

3. Be original. Don't ride on the coat tails of a famous trade mark.  It is risky to use, modify or parody a famous mark.  Owners of famous marks are sensitive about their marks. The Courts are littered with cases where owners of famous marks have objected to the adoption or modification of their trade mark, even for totally unrelated goods.  Create and register your own trade mark and stay out of Court.

4. What are the important marks? For a winery or wine producer, the principal mark will be the word the house brand, such as ROSEMOUNT or PIPERS BROOK or the sub brand such as HILL OF GRACE.  However images or the label as a whole often function as a trade mark, and the Australian wine industry is recognised for its creative and memorable labels.  These images should also be protected, if budget allows.  Remember, if the images have been created by an artist, designer or other third party, you should ensure that you acquire an assignment of the copyright in the artwork.  In Australia, this is a simple document which needs to be executed by the artist/designer and kept in your records together with your registration certificates and other documents establishing intellectual property ownership.

5. Some legal considerations. Branding your product is a serious matter, giving rise to a number of legal obligations.  Allow sufficient time to do research on the availability of the trade mark, including searches of registered trade marks and common law trade marks (those marks in use in the marketplace that are not, for whatever reason, registered), to ensure your mark is clear for you to adopt and register.  The searches provide a good indication that use of your proposed mark will not infringe a similar registered mark, that use will not give rise to objection for passing off or misleading and deceptive conduct in the face of a similar mark in use in the marketplace, and that there are reasonable prospects for registering your mark.  The searches provide the 'peace of mind' allowing you to finalise your artwork, have printing done, label the product, put it into the market and obtain a registration, without likelihood of objection or opposition.

6. Think globally.  If your wine is intended for the export market, there are advantages in ensuring at the outset that the mark is culturally suitable in your intended markets.  Stories of products hitting the markets only to fail because of lack of cultural knowledge are not uncommon.  No doubt Mitsubishi was dismayed to find that PAJERO means 'wanker' in Spanish, requiring it to use a different mark in all Spanish speaking countries.  If possible, searches should be undertaken to ensure the mark is available in all the relevant markets and applications filed to reserve the mark.  As this involves additional costs you should discuss your plans with your trade mark adviser to design strategies for spreading or delaying costs without losing rights and opportunities.

7. Further searching needed? If the trade mark will also be needed as your business or company name or as a domain name, checks on availability should be made at this time.  It is important to note, but often misunderstood, that registration of a business or company name does not provide any rights to the name, and is not a guarantee that you can use the name.  A business name registration meets the legal obligation that traders have to put their business or trading name on the public register so that the principals behind the business and its location can be identified by the public. It does not provide a right to use the name in the face of conflicting rights.. 

8. Think ahead.  Do you want the trade mark to be a capital asset?  A trade mark becomes a much more valuable asset if it is registered and able to be readily transferred.  If you are planning to sell your business, a registered trade mark clearly identifies the rights being transferred and is therefore more attractive to a buyer.

9. Why register your trade marks?  Registering your trade mark gives you the exclusive right to use, licence or sell the trade mark for the goods and services for which it is registered, blocking others from using a mark that is similar in the same field of business.  A registration is essential to allow you safe use of the mark and provides a cost-effective way of preventing others from using a deceptively similar mark.  In order to protect an unregistered mark from misuse, it is necessary to bring a common law action for passing off or under the consumer protection provisions of the Trade Practices Act.  This may be very costly as evidence establishing your common law rights must be provided.

10. What is the role of a trade mark advisor?  Your specialist advisor will be able to assist you in first instance, in choosing a strong mark.  A brief talk with your advisor when you are considering trade marks, will provide valuable guidance.  Thereafter, your advisor can assist in the searching and registration processes. 

What is in a name?  Nearly all long term successful businesses have successful trade marks.  Protection of these assets is your investment in the future of your business.  Your trade mark advisor can make this step easier for you.