What should my school’s brand be? – Intellectual property


To print this article, all you need to do is be registered or log in to Mondaq.com.

Like any business, schools are judged on their reputation. Parents and the wider community recognize 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 of the school a student attends, the quality of their education, cultural and athletic academic achievements, and much more .

As such, the tools a school uses to communicate its identity – its trademarks or “signatures of origin” – must be protected from unauthorized use. A school’s reputation can be seriously harmed by unauthorized use of the school’s brand by a third party, especially when that third party provides poor service.

That’s why schools should take steps to protect the brand 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 to register under the
Trade Marks Act 1995. This is sought by applying to IP Australia, the Commonwealth Trademark Registration Agency.

Applications are reviewed against criteria set out in the law, which also serve to ensure that the registered mark is not substantially identical or deceptively similar to a mark already registered. As part of the registration process, holders of existing trademark registrations have the opportunity to object to trademark registrations similar to their own.

Registration creates the right to sue for infringement of your mark by a third party, such as use of an identical logo, and enables a claim under statute as well as under the Australian Trademark Act. consumption.

Registering a trademark also gives a school the ability to enforce its rights against an infringing third party. This includes the right to have unauthorized use of a mark removed from an infringing website, advertisement or social media post. In digital environments such as online advertising or Google search, registration also helps to suppress unauthorized use of your trademark.

The first step to protecting your school’s brand is to carefully compile and maintain a list of all names, nicknames, acronyms, crests, badges, 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 this list – only applies to registration of trademarks used to promote the school to the community at large. For example, logos used only within the school do not need to be registered.

When considering what you might want to register, it is important to know that your registration application could be rejected if the mark:

  1. is not distinctive and does not distinguish the educational services of your school from those of other schools. In particular, if the mark is a generic or descriptive term or phrase, it is unlikely to be registered.

  2. it has not yet been used and you do not intend to use it for at least three years.

  3. is substantially identical or deceptively similar to a prior registered trade, unregistered trade mark previously applied for, or trade mark used in the marketplace.

  4. contains a prohibited sign.

  5. is prohibited by law.

  6. contains scandalous material.

  7. would have a misleading or confusing connotation.

  8. conflicts with a brand that has gained a great reputation in Australia.

  9. is the subject of a request made in bad faith.

A few other things to consider

A trademark used by a school often consists of text, images, crests or other elements. You should seek advice on whether the whole should be registered and/or whether the components of the complex mark should be registered separately.

You must ensure that the registration of a mark is consistent with the way in which it is used. For example, on your website, in your promotions and advertisements or public materials.

Also, you need to make sure that the school owns the registered trademark. For example, a logo may belong to a third party that created the school first, such as a religious institute. Also verify that any artwork or design of your brand is owned by the school or that these elements are attributed to the school and/or licensed for use.

Finally, you should verify who owns any artwork used in the mark and, if it does not belong to the school, endeavor to have it attributed to the school or obtain a license for its use.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.


Comments are closed.