Jacqui Pryor profile image

Jacqui Pryor
Top 10% Intellectual Property

Director at Mark My Words Trademark Services Pty Ltd

Member Since November 2012

Tecoma, VIC, 3160

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I am the director of a company called Mark My Words Trademark Services. I formed this company in November 2011 after working for around 12-13 years as a consultant and paralegal for other companies. I formed this company with a focus on SMEs; to provide trademark registration services at competive costs without jeopardising the quality of the service.

I live to the east of Melbourne; on Mt Dandenong, which is a truly beautiful area. The view from my office window looks straight to a forrest!

Reputation

Jacqui Pryor answered this question

Debbie Majella Nolan
Debbie Majella Nolan, Founder at The Door of Youth

Business Structure

Does a small business have to have an ABN or a business name?

Hi Debbie

I hope this helps:

Does a small business have to have a company name or trade under BN?
If a small business is going to trade by any name other than their own personal name they must, at the very least register a business name. (This is done via asic.gov.au these days). A business name is not a legal entity though - so if operating as a sole trader with a business name, the person remains the legal entity. A company however, is actually its own entity (also registered via ASIC).

If a business name offers different services it is OK to have 1 name?

Yes, so long as the business name is properly registered to the person/company carrying on the business.
Is there a service where people can go to get assistance in setting
up a new venture.? As friend has just done BN, flyer etc then has gone
to do TM to find out already being used :(

Different places can assist with different parts of a new venture. I would suggest an accountant is best to advise on the right structure (i.e. sole trader with just a business name or registering a company etc). Then, there are companies, like mine, that can assist with trademark matters. I always encourage a trademark search to be done first, for exactly the reason you have described. We offer a free basic check via our website or you can do this yourself. A registered business or company name unfortunately doesn't provide any real right to a name, a trademark will essentially 'trump' other registrations most of the time.
I hope this helps 

Jacqui Pryor answered this question

Do you know a good expert for CRM/Workflow/Practice Management?

Hi Roland,
I've used Act! (by Sage) for about 10 years in some form or another, and, purchased it when I started my company 12 months ago, as I find it pretty user-friendly, does what I need it to do and isn't too expensive as a small operator. From memory it cost me about $350 for a single-user license. Honestly, I haven't used any of the others so can't actually offer points of comparison but could be worth looking into?

Jacqui Pryor answered this question

How do I obtain government grants for my small business?

The Australian government actually has a very handy 'grant finder ' tool available. You can search based on your state (or search on national grants), industry and sort of assistance you are after to see what you might be eligible for and what you need to do.
Generally speaking there's not necessarily a financial grant simply for starting a business - but other resources may be available, such as one-on-one time with business mentors, advice from experts, seminars etc at lower costs than usual or for free. 

Jacqui Pryor answered this question

Ananda Raj Pandey
Ananda Raj Pandey, Developer at SavvySME

Online Business

Is it necessary to have physical address for online business?

I don't think it's necessary for the trust factor. However, under the new business name registration system in Australia it is mandatory to list a physical address for service (i.e. the address for all correspondence about your business name etc). And, this phyiscal address will be published on a public database. So, if you are a sole trader operating from home you may wish to investigate other physical addresses you can use for this purpose rather than have your residential address published. 

Intellectual Property

What is Intellectual Property?

It's early days and already a number of questions have been asked in relation to trademarks and trademark registration. So, I thought I'd write a quick article as a cheat sheet on intellectual property for members. What is Intellectual Property?  As the name suggests; it is property created by intellect or the mind. Intellectual property covers many different, more specific 'things', including...

Jacqui Pryor answered this question

Phil Khor
Phil Khor, Founder at

Startup

What are the most important legal issues to consider for startups ?

I would suggest the very first legal 'issue' to consider is the actual structure of your new business. Changing structures down the track can be tricky and costly so best to get it right at the start! Usually an accountant or solicitor can help determine the best structure for you and ensure personal assets etc are protected.
Once you've determined the right structure - ensuring you are registered properly, have the right permits/licenses and insurances in place is crucial. The Australian government has a business license information service (BLIS) available, where you can search in your state by your business type to determine any permits or registrations you will need and requirements you need to meet. 
Other legal issues to be considered during start up phase could include:

Rental/lease agreements; 
Contracts with suppliers (for example, graphic designers, website designers, manufacuturers, wholesalers etc)
Terms and Conditions for your website and/or for purchase of your products/services
Agreements - generally and varied depending on nature of business, for example - employment agreements; terms of service agreements; contractor agreements; confidentiality agreements; distribution agreements etc etc
Intellectual Property requirements (make sure you're not infringing rights and make sure you are protecting your rights)Others may also apply depending on the nature of your business but I would suggest that the above applies to most new businesses in some manner.

Jacqui Pryor answered this question

Wendy Huang
Wendy Huang, Full Time Blogger and YouTuber at A Custom Blog in 4 Minutes

Web Hosting

What's the difference in domain name endings like .tv and .me?

This could depend on who you ask or where you look for an answer!
.me is the top level domain for Montenegro and .tv is the top level domain for Tuvulu. But these days they are recognised more so as:
.tv - often seen as the 'television' domain so sites with this domain would likely include video content or streaming content etc.
.me - often used for personal blogs, pages and sites "individualname.me". Can be registered to pretty much anyone anywhere so don't have to have  a business registration etc like you might with a .au name.

Jacqui Pryor answered this question

Does Trademark Protection Give Rights To Related Domain Name?

The short answer is no.
However, if you are the trademark owner there may be action you can take to acquire the associated domain name if owned by someone else in very specific circumstances. And, such action will depend on the type of domain in question, for example a .com or .com.au
Firstly - trademark registration is a country by country right - so if the domain is owned/used by someone in a different country to where the trademark is registered then you can't simply claim ownership to the domain because you own the trademark 'somewhere in the world'
Secondly, if the person is in the same country but uses/promotes the domain name for an unrelated business type to your own, and to the goods/services subject of the trademark registration then they're not necessarily do anything that breaches your trademark rights. 
Thirdly, if the person is in the same country and using the domain for exactly the same type of product/service to what your trademark registration covers but has used it for longer than you, then they may not be doing anything that breaches your trademark rights.
My tip on these sorts of things - or, anything 'infringement of trademark' related -  always do your homework and be certain of your rights (even if this means seeking professional assistance) before making any contact or threat against someone using a similar name/trademark. You can in fact get in trouble and be sued if you make a threat of legal action that's "groundless" so always careful.

Jacqui Pryor answered this question

Can Smell And Sounds Be A Mark Too For Trademark Application?

Yes, they can be. 

A trademark by definition is any 'sign' that one trader uses to distinguish its goods/services from those offered by others. Under the Trade Marks Act 1995:

sign includes the following or any
combination of the following, namely, any letter, word, name, signature,
numeral, device, brand, heading, label, ticket, aspect of packaging, shape,
colour, sound or scent.  

No matter the type of 'sign' you apply for it will be more difficult to register if it's not capable of distinguishing the associated products and services. In Australia there is only one 'smell' trademark to be successfully registered. It's the smell of in connection with golf tees! There are several new applications currently pending so it will be interesting to see how they go.

Jacqui Pryor answered this question

If I register a trademark for one class does it cover all goods?

No - when you file a trademark application you must specify the goods and/or services under each class of your application. You must have at least an honest intent to use your trademark on the goods/services you nominate, so, only select all products or services within a class if you do honestly intend on applying your trademark to them all.

Jacqui Pryor answered this question

Can I own a trademark and not necessarily use it?

Technically, yes - but I wouldn't encourage it! 
Trademarks are vulnerable to removal if they are not used for a period of time, or, if at the time of filing the application the applicant had no intention to use the trademark in good faith. 
A trademark may be removed on the above basis by application of a third party - so, if another person/business didn't think you were using your trademark any longer and wanted it off the database they could make an application seeking to remove it. (This would usually occur if someone was trying to register a similar trademark and yours was coming up as a problem for them). (So, technically you could continue to own a trademark without using it because it may be that no-one ever seeks to remove it).
In the above circumstances though, if you ARE still using your trademark or believe you deserve to keep your registration there are options to oppose 'removal applications' so this should be considered and assistance sought.

Jacqui Pryor answered this question

Can I register my own name as a trademark?

The answer here is 'perhaps.
A trademark, by definition, is a sign that one trader uses to distinguish their goods/services from those of other traders. A personal name is no different to any other trademark in this sense - it must be capable of distinguishing in this manner. So, if your name is common and other people may need to use that same name in connection with similar goods/services then it could b e more difficult to register. However, if this sort of issue is reported to you by the government office there are ways you may be able to address the issue and ultimately gain registration/protection.
The other thing to be aware of with registration of a personal name is that if you happen to share a name with a famous person it could be more difficult to register. For example, if your name happens to be Shane Warne and you try to register your name in connection with sports apparel/products this could be difficult - it could be confusing to the public as they may assume the products are endorsed by cricketer Shane Warne; you cannot register a trademark that's going to confuse/deceive in this manner.

Jacqui Pryor answered this question

Is a registered trademark transferable?

A registered trademark, or even a pending trademark can be 'transferred' to a new owner, yes. This is done by assigning the rights from the current applicant/owner to the new. This can be done in several ways depending on the circumstances but commonly done by way of drafting a Deed of Assignment and filing this, along with the appropriate request, with the Trademarks Office who will then update the records to show the subsequent owner accordingly. There is no official/government fee. Fees could apply if you seek assistance in drafting of the Deed of Assignment.

Jacqui Pryor answered this question

How do I apply for a trademark?

I'd firstly like to clarify that you don't have to use a trademark lawyer in relation to your trademark matters; you can "DIY" (although not always recommended) or a specialist/consultant.
The first step I encourage clients take is having a trademark search conducted. This can rule out and/or advise on possible problems early on. (The registration process is lengthy so this can help avoid wasting time...) Some companies, including my own, will offer a basic search at no cost. Alternatively, more comprehensive searches are available for a fee.
If the search is clear, an application is filed with the trademarks office in Australia. At this time you must nominate goods/services of interest to you that your trademark will be used to identify. The filing of an application is your way of telling the government that you believe you are within your right to apply, and that you have an honest intent to use your trademark.
The government department must then examine the application and issue their results. A standard application will take around 4 months to be examined. If no problems are found the mark is accepted for registration. If problems are found a report is issued providing you a chance to address those issues.
After acceptance, the mark goes through a 3-month opposition period, where other people may object to the registration. Assuming no objections are filed in this time then the mark can be registered upon receipt of final fees.
Registration is valid for 10 years in Australia and can be renewed each 10 years.

Jacqui Pryor answered this question

Is trademark registration necessary if the logo has been in used for many years?

I may be a little biased, but yes I absolutely think a business should register its trademarks whether they've been used for many years or not. Several rights and advantages are awarded that you won't get other wise simply by using the trademark.

The right to use the trademark...  this is not a guaranteed right simply by using it;
The right to authorise others to use the trademark (for the goods/services you've nominated) - i.e. the right to license the use to someone else;
The right to take trademark infringement action against others. (Without a registered trademark you would be relying on other areas of law to stop people using similar logos, which can be harder to prove)Plus - by registering you make it difficult for others to register (and therefore gain the right to use) similar logos in your same field of business products/services.

Intellectual Property

What is Intellectual Property?

It's early days and already a number of questions have been asked in relation to trademarks and trademark registration. So, I thought I'd write a quick article as a cheat sheet on intellectual property for members. What is Intellectual Property?  As the name suggests; it is property created by intellect or the mind. Intellectual property covers many different, more specific 'things', including...

Jacqui Pryor answered this question

Debbie Majella Nolan
Debbie Majella Nolan, Founder at The Door of Youth

Business Structure

Does a small business have to have an ABN or a business name?

Hi Debbie

I hope this helps:

Does a small business have to have a company name or trade under BN?
If a small business is going to trade by any name other than their own personal name they must, at the very least register a business name. (This is done via asic.gov.au these days). A business name is not a legal entity though - so if operating as a sole trader with a business name, the person remains the legal entity. A company however, is actually its own entity (also registered via ASIC).

If a business name offers different services it is OK to have 1 name?

Yes, so long as the business name is properly registered to the person/company carrying on the business.
Is there a service where people can go to get assistance in setting
up a new venture.? As friend has just done BN, flyer etc then has gone
to do TM to find out already being used :(

Different places can assist with different parts of a new venture. I would suggest an accountant is best to advise on the right structure (i.e. sole trader with just a business name or registering a company etc). Then, there are companies, like mine, that can assist with trademark matters. I always encourage a trademark search to be done first, for exactly the reason you have described. We offer a free basic check via our website or you can do this yourself. A registered business or company name unfortunately doesn't provide any real right to a name, a trademark will essentially 'trump' other registrations most of the time.
I hope this helps 

Jacqui Pryor answered this question

Do you know a good expert for CRM/Workflow/Practice Management?

Hi Roland,
I've used Act! (by Sage) for about 10 years in some form or another, and, purchased it when I started my company 12 months ago, as I find it pretty user-friendly, does what I need it to do and isn't too expensive as a small operator. From memory it cost me about $350 for a single-user license. Honestly, I haven't used any of the others so can't actually offer points of comparison but could be worth looking into?

Jacqui Pryor answered this question

How do I obtain government grants for my small business?

The Australian government actually has a very handy 'grant finder ' tool available. You can search based on your state (or search on national grants), industry and sort of assistance you are after to see what you might be eligible for and what you need to do.
Generally speaking there's not necessarily a financial grant simply for starting a business - but other resources may be available, such as one-on-one time with business mentors, advice from experts, seminars etc at lower costs than usual or for free. 

Jacqui Pryor answered this question

Ananda Raj Pandey
Ananda Raj Pandey, Developer at SavvySME

Online Business

Is it necessary to have physical address for online business?

I don't think it's necessary for the trust factor. However, under the new business name registration system in Australia it is mandatory to list a physical address for service (i.e. the address for all correspondence about your business name etc). And, this phyiscal address will be published on a public database. So, if you are a sole trader operating from home you may wish to investigate other physical addresses you can use for this purpose rather than have your residential address published. 

Jacqui Pryor answered this question

Phil Khor
Phil Khor, Founder at

Startup

What are the most important legal issues to consider for startups ?

I would suggest the very first legal 'issue' to consider is the actual structure of your new business. Changing structures down the track can be tricky and costly so best to get it right at the start! Usually an accountant or solicitor can help determine the best structure for you and ensure personal assets etc are protected.
Once you've determined the right structure - ensuring you are registered properly, have the right permits/licenses and insurances in place is crucial. The Australian government has a business license information service (BLIS) available, where you can search in your state by your business type to determine any permits or registrations you will need and requirements you need to meet. 
Other legal issues to be considered during start up phase could include:

Rental/lease agreements; 
Contracts with suppliers (for example, graphic designers, website designers, manufacuturers, wholesalers etc)
Terms and Conditions for your website and/or for purchase of your products/services
Agreements - generally and varied depending on nature of business, for example - employment agreements; terms of service agreements; contractor agreements; confidentiality agreements; distribution agreements etc etc
Intellectual Property requirements (make sure you're not infringing rights and make sure you are protecting your rights)Others may also apply depending on the nature of your business but I would suggest that the above applies to most new businesses in some manner.

Jacqui Pryor answered this question

Wendy Huang
Wendy Huang, Full Time Blogger and YouTuber at A Custom Blog in 4 Minutes

Web Hosting

What's the difference in domain name endings like .tv and .me?

This could depend on who you ask or where you look for an answer!
.me is the top level domain for Montenegro and .tv is the top level domain for Tuvulu. But these days they are recognised more so as:
.tv - often seen as the 'television' domain so sites with this domain would likely include video content or streaming content etc.
.me - often used for personal blogs, pages and sites "individualname.me". Can be registered to pretty much anyone anywhere so don't have to have  a business registration etc like you might with a .au name.

Jacqui Pryor answered this question

Does Trademark Protection Give Rights To Related Domain Name?

The short answer is no.
However, if you are the trademark owner there may be action you can take to acquire the associated domain name if owned by someone else in very specific circumstances. And, such action will depend on the type of domain in question, for example a .com or .com.au
Firstly - trademark registration is a country by country right - so if the domain is owned/used by someone in a different country to where the trademark is registered then you can't simply claim ownership to the domain because you own the trademark 'somewhere in the world'
Secondly, if the person is in the same country but uses/promotes the domain name for an unrelated business type to your own, and to the goods/services subject of the trademark registration then they're not necessarily do anything that breaches your trademark rights. 
Thirdly, if the person is in the same country and using the domain for exactly the same type of product/service to what your trademark registration covers but has used it for longer than you, then they may not be doing anything that breaches your trademark rights.
My tip on these sorts of things - or, anything 'infringement of trademark' related -  always do your homework and be certain of your rights (even if this means seeking professional assistance) before making any contact or threat against someone using a similar name/trademark. You can in fact get in trouble and be sued if you make a threat of legal action that's "groundless" so always careful.

Jacqui Pryor answered this question

Can Smell And Sounds Be A Mark Too For Trademark Application?

Yes, they can be. 

A trademark by definition is any 'sign' that one trader uses to distinguish its goods/services from those offered by others. Under the Trade Marks Act 1995:

sign includes the following or any
combination of the following, namely, any letter, word, name, signature,
numeral, device, brand, heading, label, ticket, aspect of packaging, shape,
colour, sound or scent.  

No matter the type of 'sign' you apply for it will be more difficult to register if it's not capable of distinguishing the associated products and services. In Australia there is only one 'smell' trademark to be successfully registered. It's the smell of in connection with golf tees! There are several new applications currently pending so it will be interesting to see how they go.

Jacqui Pryor answered this question

If I register a trademark for one class does it cover all goods?

No - when you file a trademark application you must specify the goods and/or services under each class of your application. You must have at least an honest intent to use your trademark on the goods/services you nominate, so, only select all products or services within a class if you do honestly intend on applying your trademark to them all.

Jacqui Pryor answered this question

Can I own a trademark and not necessarily use it?

Technically, yes - but I wouldn't encourage it! 
Trademarks are vulnerable to removal if they are not used for a period of time, or, if at the time of filing the application the applicant had no intention to use the trademark in good faith. 
A trademark may be removed on the above basis by application of a third party - so, if another person/business didn't think you were using your trademark any longer and wanted it off the database they could make an application seeking to remove it. (This would usually occur if someone was trying to register a similar trademark and yours was coming up as a problem for them). (So, technically you could continue to own a trademark without using it because it may be that no-one ever seeks to remove it).
In the above circumstances though, if you ARE still using your trademark or believe you deserve to keep your registration there are options to oppose 'removal applications' so this should be considered and assistance sought.

Jacqui Pryor answered this question

Can I register my own name as a trademark?

The answer here is 'perhaps.
A trademark, by definition, is a sign that one trader uses to distinguish their goods/services from those of other traders. A personal name is no different to any other trademark in this sense - it must be capable of distinguishing in this manner. So, if your name is common and other people may need to use that same name in connection with similar goods/services then it could b e more difficult to register. However, if this sort of issue is reported to you by the government office there are ways you may be able to address the issue and ultimately gain registration/protection.
The other thing to be aware of with registration of a personal name is that if you happen to share a name with a famous person it could be more difficult to register. For example, if your name happens to be Shane Warne and you try to register your name in connection with sports apparel/products this could be difficult - it could be confusing to the public as they may assume the products are endorsed by cricketer Shane Warne; you cannot register a trademark that's going to confuse/deceive in this manner.

Jacqui Pryor answered this question

Is a registered trademark transferable?

A registered trademark, or even a pending trademark can be 'transferred' to a new owner, yes. This is done by assigning the rights from the current applicant/owner to the new. This can be done in several ways depending on the circumstances but commonly done by way of drafting a Deed of Assignment and filing this, along with the appropriate request, with the Trademarks Office who will then update the records to show the subsequent owner accordingly. There is no official/government fee. Fees could apply if you seek assistance in drafting of the Deed of Assignment.

Jacqui Pryor answered this question

How do I apply for a trademark?

I'd firstly like to clarify that you don't have to use a trademark lawyer in relation to your trademark matters; you can "DIY" (although not always recommended) or a specialist/consultant.
The first step I encourage clients take is having a trademark search conducted. This can rule out and/or advise on possible problems early on. (The registration process is lengthy so this can help avoid wasting time...) Some companies, including my own, will offer a basic search at no cost. Alternatively, more comprehensive searches are available for a fee.
If the search is clear, an application is filed with the trademarks office in Australia. At this time you must nominate goods/services of interest to you that your trademark will be used to identify. The filing of an application is your way of telling the government that you believe you are within your right to apply, and that you have an honest intent to use your trademark.
The government department must then examine the application and issue their results. A standard application will take around 4 months to be examined. If no problems are found the mark is accepted for registration. If problems are found a report is issued providing you a chance to address those issues.
After acceptance, the mark goes through a 3-month opposition period, where other people may object to the registration. Assuming no objections are filed in this time then the mark can be registered upon receipt of final fees.
Registration is valid for 10 years in Australia and can be renewed each 10 years.

Jacqui Pryor answered this question

Is trademark registration necessary if the logo has been in used for many years?

I may be a little biased, but yes I absolutely think a business should register its trademarks whether they've been used for many years or not. Several rights and advantages are awarded that you won't get other wise simply by using the trademark.

The right to use the trademark...  this is not a guaranteed right simply by using it;
The right to authorise others to use the trademark (for the goods/services you've nominated) - i.e. the right to license the use to someone else;
The right to take trademark infringement action against others. (Without a registered trademark you would be relying on other areas of law to stop people using similar logos, which can be harder to prove)Plus - by registering you make it difficult for others to register (and therefore gain the right to use) similar logos in your same field of business products/services.

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