Like any business, schools are judged on their reputation. Parents and the broader community recognise a school’s reputation through the name, logo, symbols and other tools it uses to communicate its identity.
The crest on a school uniform communicates both brand and reputation — it informs the observer about which school a student attends, the quality of its education, its academic, cultural and sporting achievements, and much, much more.
As such, the tools a school uses to communicate its identity — its trade marks or ‘badges of origin’ — must be protected from unauthorised use. The reputation of a school can be harmed significantly where there is unauthorised use of a school’s trade mark by a third party, particularly where that third party provides poor services.
This is why schools should take steps to protect the trade marks they use — or plan to develop and use in the future — to promote the services they offer.
One of the best ways to do this is via registration under the Trade Marks Act 1995. This is sought by applying to IP Australia, the Commonwealth agency responsible for registering trade marks.
Applications are vetted against criteria set out in the Act, which also serve to ensure that the trade mark being registered is not substantially identical to or deceptively similar to one already registered. As part of the registration process, owners of existing trade mark registrations are given an opportunity to oppose registrations for trade marks which are similar to their own.
Registration creates rights to take action in relation to an infringement of your trade mark by a third party, such as use of an identical logo, and enable a claim under the Act as well as under the Australian Consumer Law.
Registration of a trade mark also gives a school the ability to enforce its rights against a third party infringer. This includes the right to have unauthorised use of a trade mark on an infringing website, advertisement or social media post removed. In digital environments such as online advertising or Google Search, registration also assists in having unauthorised use of your trade mark removed.
The first step in protecting your school brand is to carefully compile and maintain a schedule of all names, nicknames, acronyms, crests, insignia, words, phrases and symbols — including sounds, smells and 3D shapes — that identify your school and communicate its brand and reputation.
The second step is to refine that list — only apply to register those trade marks used to promote the school to the broader community. For example, logos only used within the school don’t need to be registered.
In considering what you might want to register, it is important to be aware that your registration application could be rejected if the trade mark:
- is not distinctive and doesn’t distinguish the educational services of your school from those of other schools. In particular, if the trade mark is a generic or descriptive term or phrase, you aren’t likely to get it registered,
- it hasn’t been used yet and you don’t intend to use it for at least three years,
- is substantially identical to or deceptively similar to an earlier registered trade mark, an unregistered trade mark the subject of an earlier application, or a trade mark being used in the market place,
- contains a prohibited sign,
- is prohibited by law,
- contains scandalous matter,
- would have a deceptive or confusing connotation,
- conflicts with a mark which has acquired a widespread reputation in Australia,
- is the subject of an application made in bad faith.
Some other things to consider
A trade mark used by a school is often a composite of text, image, crest or other elements. You should seek advice as to whether the whole should be registered and/or whether the components of the composite mark should be registered separately.
You should ensure a trade mark registration is consistent with how it is used. For example, on your website, in your promotion and advertising or public collateral.
In addition, you should ensure the school owns the trade mark being registered. For example, a logo may be owned by a third party that first established the school, such as a religious institute. Check also that any artwork or design in your trade mark is owned by the school or has these elements assigned to the school and/or a licence for use.
Finally, you should check who owns any artwork used in the mark and, if it is not owned by the school, endeavour to have it assigned to the school or obtain a licence for its use.
Patricia Monemvasitis is a Partner of Carroll & O’Dea Lawyers with over 30 years’ experience. Specialising in trade mark, commercial and property law, Patricia also advises clients in the not-for-profit and schools sectors. For further articles by Patricia, go to codea.com.au