Why Not-for-profit Organisations Need Trademark

Author: Gina Banks

Just like any other business, not-for-profit organisations (NFPs) require trade mark protection. NFPs develop extensive goodwill associated with their branding and it is important to know why you should protect this intellectual property. This article will discuss how to register a trade mark and why it is a vital step for any NFP.

Filing a Trade Mark Application

The first step to intellectual property protection is filing a trade mark application. If you are an Australian NFP, you may only wish to file in Australia. However, if you are an international NFP, you may seek more broad international protection as well. When filing an application, you need to consider:

  • what will you be trade marking? Is it a word, logo or slogan?
  • who will own the trade mark? Depending on your organisation’s structure, a different entity may own the trade mark rights; and
  • what goods and services will the trade mark relate to? NFPs may offer both goods and services requiring trade mark registration in multiple classes or categories.

International Applications

Choosing to file an international application is often a costly process, depending on the number of countries that you file in. However, there is a benefit to applying for an international trade mark sooner rather than later. If you apply for an international trade mark within six months of applying for an Australian trade mark, your international trade mark application will be backdated to your Australian application date.

For example, if you apply for an Australian trade mark on 1 January 2019, you will have until 1 July 2018 to apply for an international trade mark. If you file before this date, your international application will be dated as 1 January 2019 and you will have priority over any other applications in that period. It is beneficial to file an international trade mark application if your NFP raises funds for a particular cause in a different country.

Goodwill

Protecting your NFP’s branding is important to protect the goodwill that is associated with the work of your organisation. NFPs generally have a clear agenda to engage and retain donors for a particular cause. Significant time, money and planning go into developing a reputable brand that is recognisable and trusted. If donors cannot trust your NFP, they will not donate. If your branding and trade mark is not secured promptly manner, others may attempt to apply for trade mark registration and potentially ruin your hard earned goodwill.

This also applies to international trade mark protection. It may be difficult to reclaim trade mark rights if other individuals or organisations register their branding internationally before you. It is best practice to file international applications in each country that the NFP operates.

Avoiding Confusion

It is important for you to distinguish your NFP from others to avoid confusion and provide a point of difference with other organisations. If potential or existing donors become confused between branding, they may contribute elsewhere. When you trade mark branding, it ensures that other NFPs do not use or misuse the trade mark and potentially take unaware donors from you. If you own a registered trade mark and another person or organisation infringes that registered mark, you can attempt to enforce the trade marks.

To avoid confusion when first developing branding, it is beneficial to review the public trade mark register (ATMOSS) to determine if your branding is either:

  • already registered; or
  • deceptively similar to existing branding.

To avoid potential infringement, it is best to develop branding that is unique and not merely descriptive of the goods or services provided by your NFP.

Know How to Use Your Mark

Once you have developed your branding and secured the trade marks, it is important for members of your NFP to know how to use the marks. Once you have filed an application with IP Australia, the relevant branding can appear with the ™ symbol. Although this does not provide protection, it reflects that there is a pending trade mark right. Once the elements of the branding are registered, you can use the ® symbol alongside the protected elements. This notifies others that the branding is protected and cannot be copied or misused. It is illegal to use the ® symbol on any branding elements that are not registered.

Related Bodies

If your NFP has multiple arms or bodies, the body which owns the trade marks may need to license these rights to the related bodies. These licence agreements can set out how the trade marks must be used and for how long.

For example, if a national NFP registers their name as a trade mark and independent state bodies also use this name, the national body would license the use of the marks to each state body. It would also include the:

  • fees;
  • time frame for use; and
  • correct and incorrect methods for using the mark.

It is also beneficial to have a clear branding guide. For example, in a branding guide, you can indicate whether there is a specific colour scheme or font that must be used. This ensures that all members of the organisation are aware of the requirements when using the branding.

Monitor and Enforce

Trade mark monitoring is the process of searching for potential trade mark infringements and conflicting trade mark applications. Many businesses use a monitoring service to detect any possible infringements and to decide how to take action. Often, other individuals and businesses are unaware that they are infringing your trade mark rights and are willing to resolve any issues. However, others will be aware of their infringement and may be less willing to negotiate.

Depending on the type of infringement, there are different ways to enforce your rights. In a less adversarial approach, you can send a cease and desist letter outlining the infringement and request that the infringement ends. In other circumstances, it may be appropriate to seek payments for lost revenue or donors who have paid another NFP by mistake.

Key Takeaways

Not-for-profit organisations may have a different model to profit-generating businesses, but the need to protect intellectual property remains the same, if not more important. NFPs rely on their branding and associated trust to build a long-term relationship with donors and users of their services. If this branding is misused, your NFP may be negatively impacted and therefore protecting your unique branding through trade mark applications is an important step.