Successful publishing titles and mastheads should ideally be protected by trade mark registration. Without this publishers are forced to rely on the law of passing off and the consumer protection provisions of the Australian Consumer Law. The trouble with these legal actions is that reputation in the masthead has to be proved afresh every time it’s attacked. This is costly, requiring detailed affidavits on the history and use. And even if you do establish a protectible reputation in one area of Australia, you may be denied protection in another.
By contrast a federal trade mark registration is evidence of its validity throughout the whole of Australia and not just one city or state. Reputation does not have to be proven afresh. It puts competitors on notice that you claim exclusivity in that masthead. The trade mark registration will in most cases block later users seeking to register the masthead. And it’s always far more valuable than an unregistered trade mark because it’s much easier to enforce, sell, licence and mortgage.
So, if you’re thinking of registering your masthead as a trade mark what goods or services should you apply for? Between 1905 and 1978 the key class of interest to publishers was international class 16. This covered newspapers, magazines, periodicals and printed publications. One of Australia’s earliest surviving trade mark registrations is number 27 for the book titled WEBSTERS NEW INTERNATIONAL DICTIONARY. This was first registered in class 16 in 1906 under Australia’s first federal Trade Marks Act of 1905. One of the oldest surviving magazine registrations is 16929 for the VOGUE magazine which was first applied for in 1914.
While class 16 tends to remain the key class for goods, particularly printed publications, there are now several service classes that have kept pace with technological and creative developments and offer much broader protection in relation to the internet. These include class 35 which includes news clipping services, business information services, including on-line, and advertising layout services. Another essential service class for publishers is class 41 covering entertainment, newspaper publishing, magazine publishing and on-line publishing services. Class 38 covers news broadcasting services. Class 42 includes news reporting services, photography services and photographic reporting and layout designs for newspapers and magazines. Class 9 is also directly relevant as it covers downloadable electronic publications including newspapers and magazines downloaded from the internet. It also extends to downloadable apps. Class 39 includes delivery of newspapers and magazines.
In summary the following seven classes should always be considered and searched when considering the registrability of a masthead as a trade mark –
The potential readers and the market for the title should be weighed up when the specification for each class is being drawn. So, if the masthead is aimed at a particular market or has merchandising potential then there are many other classes to consider. For example, a sports magazine should consider sporting articles in class 28, a fashion magazine should consider clothing in class 25 and a travel magazine should consider various travel goods and travel services in classes 18 and 39.
Apart from trade mark registration what other forms of protection should be considered? While domain name and business name registrations do not protect the masthead as a trade mark, they should, nonetheless be considered as part of an overall branding strategy. It’s a good practice, for example, when launching a new masthead to also register all relevant domain names of interest for the simple reason that readers will be able to easily find the masthead online. It also alerts you to potential problems where someone already has your desired domain name. But if no one has, you can nip cybersquatting in the bud.
Business and corporate names are also important for legally identifying your business. 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 masthead the very first thing you should do is obtain a trade mark registration. Even if you have a trade mark registration you should check that it’s registered in all the countries that it is used and that it is registered for all the necessary goods and services. If you are launching a new masthead then it is essential to obtain an availability search prior to using it.