Consider Trade Mark Protection Beyond Australia

The quotation “No Nation is an Island” has origins in the poem entitled “No Man is an Island” by my favourite seventeenth-century metaphysical poet, John Donne. The first two lines of the poem are “No man is an island entire of itself; every man is a piece of the continent, a part of the main”.

No Man Is an Island

No man is an island entire of itself; every man
is a piece of the continent, a part of the main;
if a clod be washed away by the sea, Europe
is the less, as well as if a promontory were, as
well as any manner of thy friends or of thine
own were; any man’s death diminishes me,
because I am involved in mankind.
And therefore never send to know for whom
the bell tolls; it tolls for thee.

John Donne

It is thought that in this poem, John Donne proposes that no one is self-sufficient and everyone has to depend on other people in order to survive and thrive. This lesson is especially applicable in the context of doing business, as most businesses want to grow and increase sales of their products. As Australia represents a limited market, that growth often has to expand to overseas territories in order to be realised. Australia as a market is part of a bigger picture.

In these pandemic days, clouded by the increasing projection of a deep recession, the importance of a valuable product that consumers want to buy, together with a strong brand that conveys powerful messaging to consumers is paramount. A strong trade mark can help a product “make it or break it” in a very competitive consumer market. Protecting the investment in those trade marks is prudent and businesses need to be mindful of keeping their trade mark portfolio in line with their business development.

Clients with budding or growing international interests often ask me what they need to do to protect their trade marks and where to start.

My advice is always to start with the development of a robust trade mark strategy. A strategy helps businesses make decisions about their trade marks and is always there as part of a “brains trust” even as personnel changes occur. For some businesses, while the present time may be quiet for sales, we recommend that this time be seen as an ideal opportunity to think of the future. It’s a time to consider where the business wants to be when life normalises with trade marks being part of that forward-thinking.

I worked with a toy company based in Melbourne to develop its trade mark strategy nearly twenty years ago. Whenever there is a question about when or where to file trade mark application overseas, they go back to that strategy for clear guidance.

Here are some considerations for developing your own strategy:

• Ensure your strategy is in line with the business strategy for growth and expansion
• If the business is new, think about where to next after breaking into the Australian market. Where are the next markets for the product? Depending on the nature of the product that answer could be closest neighbours or niche countries or even go global
• Develop categories of target markets; break it down into 2 or 3 categories based on the likely consumer desire for the product – and set of planned timeframes for business entry into those markets – for example, High Importance Markets (next six month – a year), Medium Importance Markets (1 – 3years) Low Importance Markets (3- 5 years)
• What is the budget? Does the business have the funds put aside for trade mark registration?

Seeking trade mark registration by filing applications should follow that strategy. And for established businesses – it is never too late to start developing a strategy if you do not have one. Finally, that strategy should be reviewed every few years and tweaked, or even radically changed, as the business develops and as needs and priorities change.

As we all continue to adapt to varying and ever-changing degrees of connectivity resulting from the challenges 2020 has presented, John Donne’s words feel as relevant to our modern lives as ever. In both business and in our personal lives, this year has taught us more about the power of stepping back and assessing the overall picture; to have a clear strategy and an understanding of how to join the dots to achieve success.