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Trade Mark Series

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Brand Control, Bonus Part 4A: “Black, White, or Brand Colours?” — Filing Your Trade Mark in the Right Format

When it comes to registering your logo as a trade mark, most people obsess over what to file — but give little thought to how they file it.

That might sound cosmetic. It’s not.

Whether you lodge your logo in colour, greyscale, or black and white can significantly affect your legal rights — especially when it comes time to enforce them or defend against a non-use challenge.

⚖️ Why Format Matters

The version of your logo that you register defines the scope of your protection. That includes not only the design itself, but also the colour (or lack of it). Get this wrong, and you may end up with a trade mark that’s narrower than you think — or worse, vulnerable to attack.

Let’s break down the key options.

🖤 Filing in Black and White (or Greyscale)

This is the default for many businesses — and with good reason.

Pros:

  • Broader protection: A black-and-white filing generally covers all colour variants, meaning you can enforce your rights even if you present the logo in red, green, blue, or rainbow.

  • Future-proofing: Gives you flexibility if your brand palette evolves.

  • Administrative simplicity: No need to worry about strict consistency between your filed version and the colours you actually use.

Cons:

  • If colour is a core brand element (think Cadbury purple or Tiffany blue), filing in black and white might dilute your distinctiveness case.

  • In the EU and some other jurisdictions, courts and registries have begun interpreting black-and-white marks more narrowly — treating them as literally black-and-white. That means that in those jurisdictions, using your mark in colour may not constitute use of your registered black-and-white version.  This trend hasn’t reached Australia (yet), but it’s worth noting.

🎨 Filing in Colour

In some cases, colour isn’t just decoration — it’s branding. If your logo’s colour scheme is heavily marketed and instantly recognisable, a colour filing might be worth it.

Pros:

  • Supports claims to distinctiveness through colour — which can help if you’re pursuing colour trade mark protection in its own right.

  • Reflects real-world use if your brand always appears in that colour scheme.

Cons:

  • May limit your rights in some jurisdictions — but not in Australia, where a logo filed in colour will generally still cover variations in other colours unless colour has been expressly claimed as part of the trade mark.

  • In Australia, there’s no general risk of non-use removal for using your logo in different colours — unless your registration specifically claims colour as a feature. That said, it’s still cleaner (and less arguable) to use the mark in a form close to the one registered.

🎯 Some Things to Watch

1. Evidence of Use Needs to Align (More or Less)

If your logo is registered in colour but you only ever use it in black and white (or vice versa), and you’re defending against a non-use removal action, your evidence might still be accepted — but it’s always safer if the colours match, or if colour wasn’t part of the mark to begin with.

2. Madrid Protocol and International Filings May Be Affected

Whichever registration forms your Madrid Protocol base — whether or not it’s an Australian application — the representation you file (including colours) will carry through to your international applications.

Some jurisdictions treat colour as limiting, even if Australia doesn’t. In the EU, China, South Korea and others, colour is more tightly tied to the rights you’re granted. So what might be broad in Australia could be narrow overseas if you rely on a colour version as your base.

🧭 Rule of thumb: File in each jurisdiction — including separately if necessary — in the same format in which you propose to use the mark there.

3. Misalignment with Brand Identity

If your brand identity is highly colour-driven (again, Cadbury purple or Tiffany blue), filing a version in colour without claiming the colour might undercut future arguments that the colour is distinctive.

You can’t have it both ways: either colour matters, or it doesn’t. If it does, claim it. If it doesn’t, don’t build your distinctiveness case on it later.

✅ Best Practice in Australia

So, what should you do?

  • If colour isn’t essential to your brand’s identity: stick with black and white (or greyscale) for broader and more adaptable coverage — unless you’re filing via the Madrid Protocol and plan to use the mark in colour in a colour-sensitive jurisdiction. In that case, you may need to file your base application in colour too — as long as that won’t cause issues in your base jurisdiction.

  • If colour is central to your brand strategy: consider filing both a colour version and a black-and-white version — or prepare strong use evidence to back your colour claim.

  • If your logo use varies across products or channels: a black-and-white filing gives you the most legal breathing room in Australia. Or, if your variants differ materially, file multiple versions (or a series application, where appropriate).

⚠️ Filing in multiple formats may mean more upfront cost — but it could save you a fortune later if your brand is challenged or infringed.

💡 IP Mojo Tip

Don’t confuse design preference with legal strategy. Your brand might look best in colour — but from a legal perspective, black and white may give you more options.

That said, the best general rule is this: File it how you propose to use it.
If you know the colour combinations you plan to use for the medium term, consider a series application covering those variants — or file multiple applications if that’s cleaner for your international strategy.

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Brand Control, Part 4: “Lock It In” — How and When to Register Your Trade Mark

You’ve chosen your name. You’ve cleared it. You’re confident it’s distinctive and available. Now it’s time to make it yours — legally.

A strong brand name or logo might help you win customers, but unless it’s properly registered, it won’t help you win disputes. And the longer you delay, the more you risk someone else locking it up first.

When Should You Register?

The short answer: as early as you can. Ideally, you’d file before launch — while you’re still in development — so you can resolve any issues before your brand goes public. But that’s not always practical.

  • Before launch: Best practice. Gives you a chance to pivot if there’s a conflict.

  • Right after launch: Still fine — but the longer you wait, the more you risk third-party interference or knock-offs.

  • After years of use: Better late than never. Prior use may support your rights, but without registration, they’re much harder to enforce.

And remember: while Australia protects first use, many countries follow a strict first-to-file rule. If someone else files your brand overseas before you do — even without using it — you may lose your chance to register or enforce it.

Trade mark “squatting” is a thing – a thing preferably to be avoided.

Where Should You Register?

Start with the country you’re operating in — typically your home market. In Australia, that means filing with IP Australia under the Trade Marks Act 1995.

If you’re looking to expand globally, consider the Madrid Protocol — an international filing system that lets you apply in multiple countries via a single application. You must first have a home-country application or registration, and your international rights will depend on that base filing.

However, Madrid isn’t always the right tool for every country or situation. In some markets, a direct national filing is still better — especially if you’re concerned about local examination delays, enforcement practicalities, or use requirements.

🧳 We’ll go deeper on global strategy in Part 9: From Garage to Global.

What Kind of Trade Mark Should You File?

There’s more than one way to register a mark. The form you file should match your brand strategy:

  • Standard mark: For word-only marks (names, taglines). Best for maximum flexibility.

  • Device mark: For logos, custom fonts, or stylised branding elements.

  • Series mark: For similar marks with small variations (e.g. Tasty Treats vs Tasty-Treats). Less common, and sometimes more trouble than they’re worth.

  • Defensive mark: Available only for famous brands, offering broader coverage across unrelated classes.

  • Certification mark: Used to indicate goods or services meet a recognised standard (e.g. organic, halal). Strict rules apply.

One thing to watch when filing a logo or device mark: if you file it in colour, your rights may be limited to that specific colour scheme. Unless colour is a core part of your brand identity, it’s usually better to file in black and white or greyscale — so your protection extends to all colour variants.

Like most things, there are exceptions to this.

🎨 We’ll cover colour vs greyscale filing in more depth in an upcoming bonus post.

💡 IP Mojo Tip

The earlier you file, the stronger your position — and the safer your brand. Waiting until you’re “big enough to matter” might just make you a bigger target. Brand protection isn’t a vanity move — it’s risk management with long-term payoff.

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Brand Control, Part 3: “Great Minds Think Alike?” — Clearance Searching and Avoiding Brand Disasters

You’ve found the perfect brand name. It’s clever. Catchy. The domain is available. The branding agency loves it. You’re ready to roll.

But before you commit… have you checked if someone else already owns it?

Why Searching Is Not Optional

It’s one of the most common — and costly — mistakes: a business pours time, energy, and tens of thousands of dollars into branding, only to receive a cease and desist letter from a prior trade mark owner. Worse still, they may find themselves facing an opposition at IP Australia, a rebrand mid-launch, or a lawsuit they never saw coming.

Trade mark clearance searching is your early warning system. Done properly, it can help avoid disputes, legal fees, rebranding costs, and loss of customer goodwill.

And it doesn’t have to be complicated.

Types of Searches

Not all searches are created equal. Depending on your budget, timing, and risk tolerance, here are the key search types you might consider:

  • Knockout search: A quick check of the Australian Trade Mark Register for identical or near-identical marks in your relevant classes. Fast and cheap, but limited in scope.

  • Full availability search: A comprehensive legal review of both registered marks and unregistered use — including business names, social media handles, websites, and domains. This helps you identify potential passing off or s 60 (Trade Marks Act 1995) issues where someone may not have registered their mark, but has a strong reputation.

  • International searches: If you’re planning to operate or file overseas, don’t stop at Australia. Check WIPO’s Global Brand Database, the Madrid Monitor, and key national registers (USPTO, EUIPO, etc). Remember: first to file wins in many countries.

What to Watch For

Even if your exact mark isn’t on the register, you still need to look out for:

  • Similar marks in the same or closely related goods/services
    (e.g. SwiftTech for software vs Swiftek for IT services)

  • Slight spelling variations or phonetic equivalents
    (e.g. Kwik Kleen vs Quick Clean)

  • Well-known unregistered brands
    Even without registration, a brand with a strong reputation can stop yours under section 60 of the Act — if consumers are likely to be confused.

💡 IP Mojo Tip

Clearance is brand insurance. The earlier you search, the cheaper your pivot if needed — and the more confidently you can build your brand knowing it won’t collapse under a letter of demand.

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Brand Control, Part 2: “Born to Stand Out” — Choosing a Trade Mark That Can Actually Be Registered

Not every brand name is created equal. In the eyes of the law, the more descriptive your mark, the weaker your rights.

That might sound counterintuitive — especially to marketers and founders who want a brand name that says exactly what the business does. But from a trade mark perspective, the best brand names do more than describe — they distinguish.

The Distinctiveness Spectrum

Trade mark registrability hinges on one core concept: distinctiveness. The more distinctive a mark is, the more likely it is to be accepted by IP Australia — and the easier it will be to enforce down the track.

You can think of trade marks as falling on a distinctiveness spectrum:

  • Generic terms (like Milk for milk) are never registrable. They’re the language of the trade, not a badge of origin.

  • Descriptive marks (like Quick Loans for a lending service) are difficult to register unless you can prove long and widespread use that’s made the name distinctive over time.

  • Suggestive marks (like Netflix for entertainment) can sometimes succeed if they require a leap of imagination and aren’t used commonly in the industry.

  • Arbitrary marks (like Apple for computers) are legally strong — because they don’t describe the goods at all.

  • Fanciful marks (like Xero or Google) are invented words. These tend to be the strongest of all: highly protectable and uniquely tied to their brand.

Common Pitfalls When Picking a Name

Some names feel brand-like but run into trouble at the registration stage. Here are a few traps to watch for:

  • Geographic references: A name like Brisbane Plumbing Services might be accurate, but it’s also highly descriptive and hard to protect. It tells people what you do and where — but not who you are.

  • Industry terms: A name like LegalEdge might sound sharp, but if it clearly relates to legal services, it may lack the distinctiveness needed for registration — especially if similar names are already on the register.

  • Foreign language words: Just because a word isn’t in English doesn’t mean it’s distinctive. If the translation is something generic (like Dolce, which means “sweet”), it may still be treated as descriptive.

  • Initialisms and acronyms: These can be difficult to protect unless the public has come to associate them with your business (think IBM or ANZ). Until then, they often get treated as meaningless strings of letters.

💡 IP Mojo Tip

If your brand name tells your whole story at first glance, there’s a good chance it’s too descriptive to protect. Aim for memorability, not just meaning. A good trade mark doesn’t explain — it sticks.

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Brand Control, Part 1: “What’s in a Brand?” — The DNA of Distinctive Value

When most people talk about a “brand”, they’re really thinking about a vibe: a gut-level feel, a cultural footprint, an aesthetic. And all of that matters — but from a legal perspective, a brand only really lives and breathes through what you can protect.

At the heart of that protection? Trade marks.

Brand vs Trade Mark: Not Always the Same Thing

A brand is the reputation your business builds through what it does, says, and looks like. A trade mark is a sign or symbol used as a badge of origin — a way to distinguish the owner’s business, products, and services from those of others.

A registered trade mark is that same badge formally registered under legislation that affords it legal rights — rights designed to protect the recognisable signs and symbols by which customers identify the owner’s brand.

Think of a trade mark as the legal spine holding the commercial body upright.

Your brand might include:

  • Business name

  • Logo

  • Slogan

  • Product names

  • Domain names

  • Get-up (packaging, shape, colour schemes)

  • Sound (think the McDonalds jingle)

  • Even scent (yes, that’s a thing — more on that in Part 7)

But unless those elements are distinctive and protected, you might be pouring brand equity into a bucket full of holes.

No Protection = No Control

Without trade mark protection, you can’t (at least, not easily):

  • Stop others from using confusingly similar names

  • Prevent others from trading off your hard-earned reputation

  • License or assign your brand with confidence

  • Preserve your market position if you pivot, grow, or sell

A common law claim for passing off or a misleading/deceptive conduct claim under the Australian Consumer Law requires proving your reputation and that the public is likely to be misled — no small task.

While copyright or design rights might help in some fringe cases (e.g. logo artwork or packaging design), they won’t stop someone launching a rival brand with a near-identical name or slogan.

However, if your trade mark is registered, you don’t need to prove reputation or deception — registration itself gives you a presumptive legal right to stop infringing use.  All you need to show is that the other person’s mark is substantially identical or deceptively similar to yours and that your first use of your mark precedes their first use of theirs.

Why Distinctiveness Is Your Best Friend

We’ll dive deeper into distinctiveness in Part 2, but for now: the more your trade mark stands out from what others are doing, the stronger your legal position.

Names like Kodak, Spotify, or Qantas are powerful precisely because they weren’t trying to “say what they do” — they were trying to be remembered. Compare that to generic names like The Shoe Company or Best Accounting Services — impossible to protect, easy to copy, and legally feeble.

💡 Key Takeaway

A brand isn’t a logo, a font, or a vibe — it’s the sum of the signals that connect your offering to your audience. Trade marks let you own and protect those signals. Without them, you’re not building an asset — you’re renting attention.

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Brand Control: The IP Mojo Series on Trade Marks That Stick (Intro Post)

Launching a brand? Running a business? Advising one? Then you already know the power of a strong name, logo, or tagline. But what makes a brand not just memorable — but legally defensible?

Starting later this week, IP Mojo presents:

🎯 Brand Control: The IP Mojo Guide to Trade Marks That Stick
A 10-part deep dive into how to build, protect, and enforce brands that actually hold up — in the real world and in court.

Over the coming posts, we’ll walk through:

  • How to pick a name that’s not just clever but protectable

  • How to search before you spend

  • What to register (and where)

  • How to keep your rights alive and your competitors at bay

  • What to do when you’re going global, exiting, or facing infringement

Whether you’re:

  • a founder choosing your next brand name,

  • a marketer defending a rebrand,

  • an investor reviewing a startup’s IP stack,

  • or a lawyer tasked with sorting out who owns what…

…this series is for you.

We’ll keep it:

  • Sharp and practical

  • Grounded in real-world examples

  • Unafraid to name names (or court cases)

📌 First post drops soon: “What’s in a Brand? — The DNA of Distinctive Value”

Stick around.