We need to have a conversation about duty of care in the start-up evangelist/promo space. Last night I followed a link to an event with two high profile sponsors aimed at giving six or seven start-ups the opportunity to make vital connections.
Great idea, right? Well, here’s the problem: I took each start-up’s name, conducted trade mark searches, and found only one had a registered trade mark, and the rest had no trade mark applications in train. And worse, one of the start-up names appears to be infringing another business’s registered trade mark.
This is not an isolated experience. What’s going on here when there is so much at stake?
And before we go any further, it is important to note that business and company names are not trade marks, and do not give an exclusive right to trade with the name – those rights are conferred at law by the Trade Marks Act 1995 (Cth).
Having said that, Australia is actually a ‘first to use’ country – trade mark rights to the first person to use it in the marketplace. But this doesn’t stand for much if you have no reputation and goodwill in your chosen name and have not started the trade mark registration process… and you’re putting yourself out there.
As such, giving these start-ups a public forum is akin to walking them naked down the street. The reality is that at any time another party could file the same or a very similar trade mark into the system and pip them at the post, or at least make it very difficult and costly for them to achieve protection.
Whether behind-the-scenes someone is sitting these founders down and saying, “Now look, this is risky stepping out there without your name protected”, but I doubt it just based on the sheer numbers of start-ups without trade mark filings and registrations showing up every other week.
Here’s what I recommend:
- Ask potential pitchees or start-up participants for publicly promoted events if they have trade mark registrations (if so, portray their chosen name with the registered trade mark symbol ®; if just applications, then use TM)
- If not, strongly suggest professional trade mark searches and filings are made prior to going public with their name – or at least at your event*
- Reduce your own risk by having pitchees/start-up participants ‘tick a box’ relating to understanding their risks and absolving you of the consequences (of course, this also goes for other IP protection too, i.e. patents and design rights, and revealing confidential information)
- Prepare a resources list of trade marks information for start-ups (make sure to add 10 Trade Mark Facts Every Start-Up Founder Should Know).
The goal from a duty of care perspective is to ensure you’ve done the right thing by the start-ups at the point when they have intersected with your business or organisation, but also to give them the opportunity to secure this vital and valuable asset going forward.
You might be the first time they have heard how important this process is to decreasing risk and increasing value in their start-up, both of which are very attractive to investors and potential future buyers.
Glad we had this chat. How about you?
*It takes a minimum of 7 1/2 months from filing to registration for straight-forward applications, but if ‘clearance searches’ of both the Trade Marks Register and common law databases give a thumbs up, then generally the view is the mark can be used so long as trade mark filings are immediately lodged with IP Australia.
Alicia Beverley is an award-winning IP speaker, educator, and entrepreneur, as well as trade mark professional. She is also a professional mentor to high potential and high achieving individuals. Her business KOMO® IP is Australia’s only developer of online IP learning courses. There are seven trade mark titles to-date, with another imminent, and several others in the pipeline on various IP topics.