The Promo Playbook by Cubic Promote
Welcome to The Promo Playbook, your backstage pass to the world of promotional marketing. Brought to you by Cubic Promote (https://www.cubicpromote.com.au/) Australia’s award-winning supplier of branded merchandise, this podcast is your go-to guide for making marketing and promo products work harder for your business. In each episode, we unpack real campaigns, talk to industry insiders, and share practical strategies to help you boost brand visibility, engage customers, and stand out. From trade shows to onboarding kits, we cover it all — with no fluff, just real insights that convert.
The Promo Playbook by Cubic Promote
Trademarks: Protecting Your Brand's Unique Identity
This is a conversation about Intellectual Property. It is neither specific nor general legal advice. Werrdan Khoury, Principal Solicitor at Daniel Jude Lawyers, breaks down the fundamentals of intellectual property protection and explains why your brand's uniqueness is worth protecting through proper trademark registration.
• Trademarks protect three fundamental rights: your unique expression, your property, and your consumers' right not to be misled
• A brand is comparable to a face in a crowd – it has distinctive features that make it uniquely identifiable
• Registered trademarks (®) provide the strongest protection and are governed by international systems
• Unregistered trademarks (™) are self-proclaimed ownership claims that establish a history of use
• The most common mistake businesses make is choosing descriptive names that are difficult to trademark
• Creating a holistic brand package (unique logo, font, colors) strengthens trademark protection
• Trademark infringement cases hinge on whether consumers would be confused between brands
• Acting quickly is essential – intellectual property law favors first movers
• Delaying trademark registration or enforcement can permanently damage your rights
Contact Werdanhoury at Daniel Jude Lawyers for assistance with intellectual property matters.
Find out more and visit our website: https://www.cubicpromote.com.au/
The following episode on the Promo Playbook is on the topic of intellectual property. It is a general conversation and is not to be construed as specific legal advice or to be construed as general legal advice. Please enjoy the conversation in the preceding podcast. Welcome to today's episode of the Promo Playbook by Cubic Promote. Today I have a lovely guest. We're going to be talking all things business. Lovely guest, we're going to be talking all things business and specifically today we're going to be talking about legal matters around intellectual property and copyright. My guest here today is Wodan Khoury. Wodan Khoury is a principal at Daniel Jude Lawyers here in Sydney, australia. Wodan, would you like to introduce a bit about yourself and a bit about your background, your company and perhaps a bit of pedigree about yourself. Thank you.
Speaker 2:Charlie, hi, ladies and gents. Thank you for having me, charles. Firstly, so I'm Principal Solicitor here at Daniel Jude Lawyers. We are a commercial law practice, so we deal with all things business, primarily in intellectual property, taxation and general day-to-day commercial contracts. We've now been operating here since 2020, and we kicked off after having my brother and I started the practice after working with our father for 10 years before that. So yeah, Brilliant, amazing.
Speaker 1:Well, thank you for the introduction. There simply is no better person to tackle the topic on intellectual property in Sydney than Wodan with his pedigree and his experience. So, if I may ask you, when it comes to logo trademark and protection, what are some of the sensible steps businesses should take to protect their logo from copycats? And specifically I guess I want to ask is is trademarking a logo the only option, and is it the best option, or are there other options available?
Speaker 2:Okay, there's a lot of great questions there, charlie. What I want us to do is take a step back and actually look at what's the essence of the concept of your brand and your trademark. What does that even mean? Because that informs the best strategy. So best metaphor is like a face in the crowd. Right, there's a million people in the audience, but there's only one, charlie Luke, and your unique face has a uniquely sized nose, eyes, lips, shape of cheeks, jaw, hair, tongue, voice, emotional countenance, etc.
Speaker 2:The same position is with your brand. What? Where, ultimately, every law that comes out seeks to protect or advance a right that you have, either a human right or a business right. What is it that? Your brand protection? What is it that your trademark seeks to protect? Three things, three rights. One, your unique voice of expression. Two, your property. It's your piece of property. It's a species like a piece of land. Your brand is your property, so you want to protect that Ring fence, your piece of property. And finally, your consumers have to be protected, because they have the right to autonomously choose the things that they, the products that they want to purchase, without being misled or deceived into buying pepsi when they thought they were actually buying cola, so it's to protect your individual consumers as well.
Speaker 2:So, now that that framework is established, what is this concept of a trademark? Now? The trademark ultimately seeks to protect all of those things. The most primary thing to establishing your trademark is that you are unique. You are unique. There is no other tool that is more strong than being able to register your trademark, your brand, and when I say your brand, it's a device mark, action. People think of the logo, but the logo isn't just the symbol. It's the words involved in it and other things around it. It's a device mark.
Speaker 1:So it's essentially what makes you you and what makes a company a company, and so any imagery, symbolism, words, text, anything that defines a company and strays into their individualism, is considered a trademark and can be protected.
Speaker 2:Or something that can be trademarked. It's a device mark that can be ultimately turned into a trademark. Okay, now, there are two types of trademarks registered in common law. I'll get to that later. It's a device mark that can be ultimately turned into a trademark. Okay, now, there are two types of trademarks registered in common law I'll get to that later when we ultimately always want to work towards the registered trademark.
Speaker 2:Now, to get there, you want to show your uniqueness. But the best strategy to achieve that, charles, is to go in as holistically as possible. So when you put in your personal brand, you don't just want to put in the words cubic product, or Coca-Cola just doesn't want the words. They want to put in the font, they want to put in other things around it. So you want to try and include as holistic registered trademark as possible. And what happens is is that that initial registration becomes like your root in the ground, because then you can gradually extend upon that trademark. So if you have a central cubic promote trademark with the symbols, the colours and the word, once that's locked in as a registered trademark, you can then edge out on top of that and feed off that central trademark. It becomes an ever-growing piece of property Understood.
Speaker 1:Fantastic, that's a brilliant explanation on the trademark and what goes behind it. But in terms of a customer having a logo, having their branding trademarking, is that indeed the only option to protect themselves, or are there alternate ways one can go about defending their intellectual property rights?
Speaker 2:Yes, of course, In a sense you've got your registered trademark, then you've got your common law trademark. This is interesting now, Now your registered trademark, trademark you've seen everywhere. If you look at any McDonald's or whatever the major brands are, you'll invariably see a little up in a circle, gantt's registered trademark. It's gone through IP Australia. It's gone through the whole system. It's been subject to analysis, objections etc.
Speaker 1:Yes, and it's likely, and this is an international system, it is regulated internationally.
Speaker 2:In Australia it's governed by Australia, so if you go into another country, you feed off what you've achieved in Australia, but you would have to be registered in another country as well If you were to expand to the US. You have to submit to their laws Fantastic.
Speaker 1:I distracted you. You were talking about common law.
Speaker 2:Correct. So you've got the registered facility. Then there's common law. And that's pretty easy, charles. That's simply you putting and you would have seen this a little TM next to yours. Now that's self-imposed. That's you. That's the equivalent of a dog urinating on a tree. It's a self-acclaimed form of saying that's mine.
Speaker 1:And this self-proclaimed form can take a shape for small businesses and also large multinationals, because I've seen some very big companies simply use the word TM and I always assume TM having somewhat the same relevance as our registrar, but clearly not the same relevance as our registered trademark, clearly, not no, it's self-proclaimed.
Speaker 2:It is an initial, very effective first step, because what you're saying is this is mine and you are taking ownership, because part of the process in getting a registered trademark is to show that you have a history of use of this, but also that you are saying that this is yours. Why that? Sorry, that's maybe poorly put there and reductive in what I'm trying to say, which is, when you're putting in an application, you want to show a historical proclamation of what is yours. That's really powerful to show, particularly where there may be an objection. So if you can show a history of saying I have, for a while, whilst I was preparing a registration showing tmtn, I had a history of use and a history of proclaimed ownership which adds, which gives you common law rights which may be challengeable, but it's at least a beginning stage.
Speaker 1:It sounds also sensible. Actually, when one talks about trademark and copyright, it always seems those are very big words, especially if you're a new business owner, and it seems like a very, very deep, heavy topic. But in essence it's common sense.
Speaker 2:It's common sense. Everything in law is common sense, not just Fantastic. It always goes back to these underlying rights. It's brilliant, it's so sensible, 100% proclamation of your unique identity. Own it and it's a no brainer. A small TM is something you can do to protect yourself with even outgoing to a registrar Amazing.
Speaker 1:I've learned so much in such a short space of time. I'm sure our audience has too. Still on the same topic, different question Common mistakes. You would have seen many businesses that perhaps you've seen in the industry, perhaps some of the businesses you work with yourself. Are there common mistakes businesses make when it comes to logo brand protection and how they could avoid them? But, hearing from what you just told me, possibly the mistake would be the history and registering their trademark at every step of the way. I'd love to hear your thoughts there.
Speaker 2:Can I tell you the most common one, charles? The most common one is choosing a brand name and logo which is, in a sense, descriptive. If I was to set up a company called the Burger, try as I might, I couldn't do it because it's such a common name. Simply it's a description. Or if I was to try and get a trademark for the glasses company or something glasses manufacturing, that is very hard Unless I can show a strong history of using that name and nobody else has used it and it goes way back and there's no one that's challenged you in that.
Speaker 1:It's very hard to lock in a descriptive name that makes so much sense, for obvious reasons.
Speaker 2:But you can try and navigate this. Even if you have a descriptive name, a strategy to employ is, like I said at the beginning, putting in a holistic device map for registration. So if you put in a holistic one, it's not just the words which may be descriptive, but it's a logo, it's a type of font, it's colors that are unique to you, and that's what you want to ultimately be working towards.
Speaker 1:A total package.
Speaker 2:Total package. That's in a sense a way to address the pitfalls a major pitfall, but a strategy really to deal with it.
Speaker 1:What an interesting, interesting answer. I did not expect you to answer, that being the most common business pitfall being a descriptive name of course.
Speaker 2:Let me give you a great example of another pitfall. Oh, actually, this now has to do with defense of your works, but maybe, if you're, but in terms of registering, that's the most, that's the biggest and most problematic area that's the most common problematic area.
Speaker 1:How does one go about defending a trademark? Yeah great question, charlie.
Speaker 2:So now that you've gone to all the effort of getting a trademark, registering it, defining your uniqueness, someone now comes along and is using it, exactly your hard-earned reputation getting trashed. The technical term for that is called passing off. A great case which you may have seen in the news was the case of mcdonald's versus hungry jacks. Oh yeah, I remember that, the big mac versus the big jack. Yes, all right, hungry Jacks won that oh fascinating.
Speaker 1:Yeah, they had you as a lawyer.
Speaker 2:I would. I'd fortunately know they won because ultimately it was found that even though both of them had registered the Big Jack had registered its trademark name, big Mac had registered its they were found to the Big Jack was not misleading, it was not going to lead to confusion and that's ultimately, in a practical sense, the test that you really need to be thinking about. It was found that the big jack and advertising of that would not lead people to think that they were buying a big pack. It would not confuse the audience and that's a critical thing, it's a common sense thing. The person who's coming up against you, who's trying to use your logo or trademark, ultimately will it lead to a confusion amongst consumers. And if you can show that at a very common sense, basic level, simply showing that I've lost customers, I've had people go elsewhere. I've had people contact me saying that they're confused.
Speaker 1:It lacks that particular piece for a McDonald's to win Correct. It's that uniqueness.
Speaker 2:That's what it always goes back to. So you would want to then practically issue straightaway a cease and desist letter, Get on the front foot and protect it. The other thing to do is to make sure you're using your logo. A lot of people go to all this trouble and then it sits vacant. It just doesn't get used. If you can't show continuous usage, well then it's like a piece of land that fences have gone into disrepair. People can jump over and take advantage. So as soon as it comes up, you want to immediately issue a cease and desist and be showing how it is leading to that ultimate confusion.
Speaker 1:I love how the way you define law in such a visceral visual sense that I myself, and I'm sure the viewers, can really understand these concepts and these elements because it's so visceral. But for those viewers out there, I hope this session you were able to learn a little bit about copyright, intellectual property and a bit more about business protection as well. So, wadan, thank you for enlightening the crowd and myself for the past 10 to 12 minutes. If someone wants to learn more about intellectual property, perhaps they had a query, perhaps they are in a conundrum, perhaps they need to defend, or perhaps they need to register and protect themselves. How can one contact you? How one go about starting the process.
Speaker 2:Yeah, thanks. The key thing is, in all of this speed of movement, you can't delay putting these things off, because every day that passes off.
Speaker 2:Every day that passes by someone else is either utilising creating a logo or infringing on you, and this is all a matter of time. You need to be the first. This is all first mover. As an area of law, it's defined by first movers. Coca-cola got there first. As much as I wish I could use their logo and font, I can't. They were there first. So being first always be, always being early is so critical in this area, and if someone is infringing, you've got to act with speed, otherwise you'll have been considered to be acquiescing. So moving quickly. You have my details below. You can very easily contact me. You'll have my number, my office number, my email. It's always there at any time if you wish to contact me. Amazing, I'm always here and I'm very happy to help answer questions.
Speaker 1:Thank you, wodan, and to the audience out there, we will have the contact details for Daniel Jude Lawyers at the bottom, along with his LinkedIn profile. There simply is no stronger lawyer in this specific space than Werdan. Thank you so much. You're too kind. Thank you to the audience for listening to the Promo Playbook by Cubic Promotions and please stay tuned for the very next episode.
