29 July 2015
by Christine Long
The woman who took on Coke and won
Annabel Young trademarked Honest Tea back in 2005. It took years of fighting to protect her brand.
Annabel Young's tales of trademark trials and tribulations are enough to make you want a cup of tea and a lie down.
Young had already done the planning and design work for a tea product called Vitalitiea when she decided to trademark it. It was only then she discovered a European company had beaten them to it by a single day.
So when she created Honest Tea in 2005, she trademarked it straight away.
"We'd had it for a couple of years when we got hit with a challenge from a US-based company who thought that they had global rights because they were using that name in America," she says.
She won, but their victory was relatively short-lived. "A few years later the US company was bought by Coca-Cola in America and they started the whole thing again," she says.
"Eventually, after years of fighting we won," says Young. "But that was only last year."
Young won the first case because she owned the trademark in Australia. But she says when Coke bought the company, "Then it got really nasty because [they] came after us with a much bigger power and a much bigger muscle behind it and tried the same thing again. For six months they had a private investigator following me around to try and prove that we are not a tea company. They tried everything – at one stage they tried to argue with us that tea wasn't a beverage."
She describes the fight as a "nightmare" but she wasn't about to back down on principle. Having spent thousands of dollars defending her brand Young's advice for other small businesses is trademark early. "It's not that expensive and it's such great protection," she says.
Having a long trading history doesn't guarantee protection from someone trying to take your business or product name.
Trademark attorney Cathryn Warburton says trademark trolls keep an eye out for rising stars that are unprotected by trademarks. "[They] register the trademark in the business' name then aggressively pursues them for breach of trademark."
One client targeted in that way had been in business for more than 15 years. "To get their name back would have cost in excess of $100,000 in court fees so they changed their name," she says.
Binh Rey, principal consultant for Seriously Trademarks, has a similar story of a Cairns motor mechanic who had been trading for about 25 years and sponsored car racing to the tune of $40,000 annually. When a Brisbane business trademarked the name, it told the Cairns mechanic to remove it from their website, signage, uniform logos, cars and sponsorship.
"Whoever gets the trademark first gets the name," she says.
Warburton advises people to trademark their name before launching a business. "Registering a business name with the Australian Securities and Investments Commission is not enough," she says. "Neither is registering a domain name. In the eyes of the court, the trademark trumps everything and it is costly to fight it."
Rey charges about $1600 to go through the trademarking process. A lawyer might charge between $2500 and $3000 or you can do it yourself.
A trademark can be a word, slogan, symbol such as a logo, design and packaging or a combination of those things. Businesses should think about trademarking their products, too. Rey gives the example of a cafe that has developed bottled juices that they are selling to customers or wholesaling. "That is a product and you need to trademark it because once the public gets on to it there might be someone who wants to copy that name."
A trademark is registered for 10 years and only applies in the country it has been registered in. Then the onus is on you to police it. Corporations often have in-house lawyers to police their trademarks, says Rey.
An Adelaide woman who bought a chocolate business found that out to her cost.
The chocolatier's address was at number 5 and the logo for the business looked like the Chanel No 5 logo, explains Rey. She was pursued by Chanel and had to devise a new logo which then had to be approved by Chanel. That meant changing her signage, business, logos on her website and labels.
As well as protecting your business, a trademark can be worth something.
"You can licence it; you can franchise it; you can get royalties out of it," says Rey.
She stresses doing your research before launching any new venture or product and has these tips for finding a name that can be successfully trademarked:
- Avoid common words
- Come up with five names to try
- Do a Google search of the names
- Do a company name and trading name search via Ibrbusiness.gov.au
- Do a domain name search via ausregistry.com.au
In Australia and New Zealand a trademark application can be filed within a week. The examiner report can take up to three months and then there is a two-month public advertising period. Once approved registration takes about a week. Internationally, the process can take eight to 12 months.
While an application is in process, Rey advises business-owners to keep their lips tightly buttoned. "There is a two-month period when people can object to your application and once someone objects it's really difficult to overcome the objection."