Brand Control, Part 5: “The Subtle Art of Brand Control” — Trade Mark Ownership and Assignment

Trade marks are valuable assets — but like any asset, their value depends on who owns them.

Too often, businesses assume that if they’re using a brand, they own it. But that assumption can fall apart quickly in the face of legal scrutiny, especially when an investor, acquirer or opposing lawyer starts asking questions.

Getting trade mark ownership wrong isn’t just a technical slip. It can torpedo a funding round, delay a sale, or even expose a business to infringement claims from within its own camp.

🔗 Common Ownership Traps

Let’s start with a few real-world scenarios where ownership can become dangerously unclear:

1. Employees vs Contractors
If an employee develops a brand name or logo in the course of their employment, the default position is that the employer owns it. But if you used a contractor — say, a freelance designer or marketing agency — then unless there’s a clear written agreement transferring IP, they may legally own the mark.

This is especially true if the contractor applied to register the trade mark themselves — and it happens more often than you’d think.

2. Founders and Side Projects
A founder might register the brand name in their own name early on, before the business is incorporated. That might seem harmless — until the business seeks capital, or goes to sell, and it turns out the company doesn’t actually own its own brand.

Investors will spot this immediately in due diligence. So will buyers. And neither of them will want to negotiate with a founder’s ego when they’re paying for a company asset.

3. Joint Ventures
When two businesses collaborate on a new offering, they often co-create a brand. But without an express agreement, who owns it? Half each? One party? Neither?

Ambiguity in a joint venture brand is a recipe for dispute — particularly if one party starts using the brand solo down the track.

📑 Assignments and Transfers: Cleaning Up the Chain of Title

The good news? Trade marks are assignable — they can be transferred from one entity to another like any other form of property.

But they need to be:

• Documented in writing — via a deed or agreement; and

• Formally recorded with IP Australia (if the mark is registered).

Some common triggers for assignment include:

• Business restructures (e.g. transferring IP from founders to the company, or from one group company to another)

• Sale of business or assets

• Fixing past mistakes (e.g. if a mark was filed by one entity but you want the trade mark held by another entity)

You can’t just tell people a trade mark belongs to your company. If it was registered under someone else’s name — a founder, contractor, or prior owner — you need to assign it, and record the transfer.

🚫 Assignments Don’t Cure Invalidity

Be careful — an assignment won’t fix an invalid application.

If a trade mark application is filed in the name of a party who is not the true owner of the mark at the time of filing, the application is invalid. You can’t fix that simply by assigning it later to the correct entity. The application is fatally flawed from the start — and may be removed or opposed on that basis.

So how do you know who the “true owner” is?

Ask:

• Who created the mark?

• Was it created by an employee, contractor, or external agency?

• Was it commissioned, and if so, under what terms?

• Who controls the use of the mark in trade?

• Who will actually use the mark in connection with goods or services in Australia?

In most cases, the true owner is the entity that first intends to use the mark, or controls its use in trade and commerce. If you’re registering for a company that doesn’t exist yet — wait until it’s incorporated. If you’re using a contractor, make sure IP is assigned before the application is lodged.

If you’ve already used the mark as a trade mark before getting your corporate structure sorted, then the person or entity that first used it is probably the true owner. In that case:

• Either apply in that party’s name, or

• Assign the trade mark to your intended applicant before filing.

In either case, get tax and accounting advice first — there could be capital gains tax or other structuring implications worth considering before assigning IP or applying under the wrong name.

💡 IP Mojo Tip

Own the brand before you build the brand.

1. Identify the true owner on day one – the party that first creates and controls use of the mark.

2. Put it in writing – deed of assignment or employment/contractor clauses that clearly vest IP.

3. Record it – lodge the assignment (or the application) in the correct name with IP Australia straight away.

4. Audit early, audit often – confirm ownership before every financing, restructure, or marketing push.

If you nail these four steps, you’ll avoid the “who-really-owns-it?” drama that derails deals and drains legal budgets.

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.

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.

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.