Surprisingly few bands have registered their names as trade marks in Australia. You’d think, for example, that Pink Floydand Led Zeppelin would be registered as Australian trade marks. And you’d be wrong. Not a single Australian trade mark registration exists for these world famous bands.
That’s not to say that these bands lack protection for their names in Australia. They’d be treated as common law trade marks under the law of passing off. There’d also be some statutory protection under the Trade Practices Act 1974 (Cth) which would prevent others from using the band’s name in a way that is likely to be misleading or deceptive. There are similar actions in other countries such as New Zealand, the United Kingdom and the USA.
But these obtuse legal actions require that the band’s reputation has to be established in each and every court action that is brought against imitators. Compared to a federal trade mark registration their utility is limited. A trade mark registration puts competitors on notice that the band claims exclusive rights in its name. Often notice of that right is all that’s needed to bring the infringing conduct to an end. The registration will also, in most cases, block others seeking to register the same or confusingly similar band name. A trade mark registration will also often become a band’s most valuable asset too, because they’re much easier to value, sell, licence and mortgage than a mere common law mark, i.e., an unregistered trade mark.
So why aren’t more bands registering their names as trade marks? Cost alone is usually not the issue. A large number of well known artists often take the trouble to register their band as a business or corporate name despite the cost. And despite the fact that business names are next to useless when it comes to actually protecting the name. Sadly the real reason why many successful bands have not registered their names as a trade mark is ignorance of the powerful and valuable rights that are tied up in trade mark registrations.
If you’re thinking of registering your band name as a trade mark where do you start?
The first step is to determine whether the trade mark is available. It helps if you conduct your own preliminary searches to see whether anyone else is using the proposed band name. But if you’re unsure check with a professional as there are many variables to consider such as the territory, the meaning of the name, whether it’s confusing, whether it lacks distinctiveness, whether the domain name is also available and so on. A professional trade marks attorney can help minimise these risks and save you from an unwanted legal action.
Second, what goods or services should you apply for? Prior to the introduction of service marks in Australia in 1978 the main class of interest was 9. This class covered vinyl recordings but over the years it’s been extended to nearly all forms of audio and video recordings including compact discs, DVD’s, MP3’s and downloadable music. So this class remains vital and it even extends to computer games such as releases on Guitar Hero and Rock Band where many bands such as ACDC, The Rolling Stones and the Beatles showcase their music.
Classes 16 and 25 are also popular for band name trade marks. The former covers books, music magazines, posters and printed music while the latter covers T-shirts, clothing, footwear and headgear. Even for new bands these classes cover essential merchandise products.
The key service class of interest is 41 as it covers entertainment, concerts, live performances, events, music publishing, music recording, music production and arrangement, online entertainment information as well as film, television and radio shows. Class 38 will also often be relevant as it covers music broadcasting and delivery of digital music by telecommunications including mobile phone services.
In summary the following five classes should be considered and searched when considering the registrability of a band name as a trade mark
- class 9 – audio, video, downloadable music files, computer games
- class 16 - books, music magazines, posters and sheet music
- class 25 – T-shirts, clothing, footwear and headgear
- class 38 - delivery of digital music by telecommunications
- class 41 – entertainment, films, live entertainment, concerts and music production.
If the band has merchandising potential there are several other classes that should be considered such as games, musical games and sporting articles in class 28, musical instruments in class 15 and perfumes in class 3.
The application process takes a minimum of seven and half months. And it may take as long as two years or even longer. This is because if the mark is not distinctive or if its confusing with another mark the trade marks office, i.e., IP Australia, will issue an examiner’s report. Also, even if you succeed in having a clear report issued the mark is advertised for a 3 month opposition period where any person can object to the mark if, for example, it is confusing with another trade mark or it lacks distinctiveness. Again, to avoid those hassles the risks can be minimised by searching for your proposed band name trade mark before you apply.
Apart from trade mark registration for band names what other forms of protection should be considered?
While corporate, domain and business name registrations do not protect the band name as a trade mark they should, nonetheless, be considered as part of the overall strategy. It’s a good practice, for example, when launching a new band name to also register all relevant domain names of interest for the simple reason that the audience will be able to easily find the band online. It also alerts you to potential problems if you discover that someone has already registered your desired domain name. But if no one has, you can nip cyber squatting in the bud. You only have to look at and visit some of the following websites to realise the vital symbiotic relationship between trade marks and band names –
Business and corporate names are also important for legally identifying and structuring your band. But such names will not provide any substantive protection in terms of trade mark rights. Indeed, a trade mark owner can seek an order from the court preventing the use of a business or corporate name if it infringes the trade mark.
So if you are seeking to protect your band name the very first thing you should do is obtain both a trade mark registration and the associated domain name. If you are launching a new band name then it’s best to obtain an availability search in the relevant markets or countries prior to using it.