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Fourteenth in a series of interviews in which specialist travel lawyer Anthony Cordato discusses issues of vital importance to travellers, travel agents and tour operators.

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Why is branding important for a travel business?

Have you ever noticed how the public is hesitant to book with a tour operator, an accommodation provider or a carrier that they have not heard of before?

If the public has heard of a brand name then they are likely to trust the brand name and if travel or a tour is associated with the name, they will book the travel or tour.

In a true sense, the brand name brings the public to your door. It follows that legally, and accounting-wise, brand names are considered valuable – brand names represent part of the goodwill of the business. Their value is obvious when a travel business is sold – a well known brand name, coupled with client lists and a profitable business track record, will be what the purchaser is interested in paying for – the desks, computers, and other plant and equipment can be purchased cheaply anywhere!

A positive brand image works in the same way as a good reputation in attracting clients and improving your bottom line. Surveys prove that a brand associated with good value is of enormous benefit to a business in times of economic adversity.

Choosing the brand name and logo

Anthony Cordato, a Sydney-based specialist travel lawyer whose legal firm, Cordato Partners, offers specialist legal advice to travel agents, tour operators, carriers, resorts and backpacker hostels, says that simple and distinctive brand names often work best.

“Travel is one of the great industries for names. Looking through the lists, you can see that fertile imaginations have been applied to naming many travel agencies and travel companies. I always think that the great names are those with the ‘why didn’t I think of that name’ factor.”

Here are some tips in choosing a brand names and logos:

• Be different – the brand name should be different to the brand name used by an existing business. Otherwise it can confuse the public, and the existing business might restrain its use, legally. There is no objection to using generic words such as ‘travel’, ‘tours’, ‘holidays’ or ‘cruises’. It is important that those words should be coupled with a different word from what is found in a rival’s name. How different is ‘different’? For instance, if an existing business is called ‘Coral Cruises’ then you should avoid use of a name such as ‘Blue Coral Cruises’ or ‘Coral Reef Cruises’. But you may use ‘Sea Turtle Cruises’, ‘Starfish Cruises’ ‘Outer Reef Cruises’ without fear of confusion.

• Be distinctive – a brand that uses a name or logo that has no connection to the type of business will often be able to build a stronger brand. For instance, Qantas is a made-up word (originally an acronym for Queensland and Northern Territory Air Services) and the name is a strong brand because the only association you can have with that word is an airline. Virgin and Tiger are words which have meanings which have no connection with flying, and so when those words are used to brand an airline name, they also create a strong brand. Similarly with the airline logos, the kangaroo, the ‘V’ and the tiger.

• Place names and people names work – using a place name in the name helps the public find the business, and using a person’s name helps establish a trust relationship. For instance, many travel and accommodation operators will add ‘travel' or ‘holidays’ or ‘resort’ to the name of the place in which they operate – it could be suburb or city where their office is located, or it could be their destination. It works even after the business has expanded away from the place or person, for instance, Trafalgar Tours and Harvey World Travel.

• ‘We do’ and ‘we are’ names need a strong logo – words such as ‘travel’, ‘holidays’ ‘flights’ and ‘cruises’ are descriptive, but need either a distinctive word with them, or a strong logo. For instance, the brand name ‘Flight Centre’ describes its core business well, but because the name is not distinctive, it needs to be associated with a strong logo, in this case of a smiling air captain, to enhance the brand, and to ‘personalise’ the brand. Names using a place name also need a strong logo. Logos in the form of a stylised representation of a beach, a mountain, the resort, a famous landmark, are used to enhance a place name brand. For instance a ‘Sunshine Beach Resort’ might have a logo of the sun rising over a beach (to make it more effective, the sun may have a ‘smiley face’).

A brand name can only be chosen if it is available. The Australian Securities and Investments Commission (ASIC) keeps a register of all company names, business names and entity names in Australia – there are 1.6 million corporations, each with a different name on the register (source: 2007-2008 ASIC annual report). You can check availability of a name by visiting the website www.asic.gov.au / national names index (try also identical names check).

A logo can only be chosen if it is available. IP Australia, which is the Commonwealth Government Agency responsible for administering trade marks, maintains a register of logos – it is called the trade marks register. You can check availability of a logo by visiting the website www.ipaustralia.gov.au / trade marks / services search.

Protecting the brand name and logo

“Building a brand is something all businesses love to do,” Cordato comments.

“You can build a brand in many ways: through a marketing presence; through providing good service consistently; through word of mouth. While you are focused on  building the brand, it is vitally important to have legal protection in place. Brands without legal protection are like sandcastles which are washed away when the tide comes in. It’s wise to use all legal means to protect your brand before you go to the trouble and expense of building it.”

Here are some tips in protecting brand names and logos legally:

• It is better to register the name as a company name rather than a business name, because that will protect it throughout Australia. “Business names are registered in the state registers of business names. The name is protected only in the state in which the business name is registered. Company names are registered in the national register maintained by ASIC, and therefore have protection throughout Australia with only one registration. If a company name is registered, there is no need to register the name as a business name in each state.”

• When naming your website, register a domain name that is the same as your business name. “This is not as elementary as it sounds. Most travel agents, tour operators, resorts and activity providers have their own websites.  I commonly see abbreviations of the name when it is registered as a domain name,” Cordato notes. “If your name is Full Moon Travel, there’s no sense in calling yourself www.fmt.com.au on the web. Always spell the name out in full, such as www.fullmoontravel.com.au as otherwise you are not building your brand name because the search engines won’t pick up the name, they pick up the abbreviation. It doesn’t seem to matter too much what suffix you use – com or com.au or net or whatever – but if you want to best protect your name, register it in the most popular domains.”

• Registering a name and a logo as a trade mark can provide very valuable protection. “Many people forget that registering a name as a company name, business name or domain name only gives common law rights of protection,” Cordato warns. “Those rights include the right to sue for passing off. Passing off actions can be expensive because you have to establish the reputation and use of your business name. Although it is sometimes overlooked, one piece of legislation that provides very real protection is the registration of your name as an Australian trade mark. The registration of an Australian trade mark costs about the same as registration of a company, but will give very powerful protection. The fact of registration provides a short circuit for protection because no longer does the reputation and use of the trade mark need to be proved. Therefore all that has to be proved to challenge someone using a similar name, and to obtain a court order to stop them using it, or transfer it to you, is that the name has been registered as a trade mark. The Trade Marks Act specifically provides for that protection.”

People know immediately if someone has registered a name as a trademark, because the letters ™ or the symbol ® will follow the name.

As Cordato points out: “As an example, you’ll see those letters, ™, after the name e-Travel Blackboard. In fact that’s a very good example, because it uses a common word, ‘travel’ and associates it with a word not commonly associated with travel, ‘blackboard’. It also works in another sense, because the ‘e’ prefix denotes the internet and ‘e-Travel” again makes it distinctive. To register a name as a trademark, it must be distinctive and preferably it should be written in a distinctive typeface. Logos are also part of branding and a distinctive logo can be registered as a trademark or combined with words into a trademark.”

Trade marks – the ultimate in protection

Trade marks may not be registered if they are too similar to an existing registered trademark.

“The test for trade marks is much harsher than the test used for registration of similar business names,” Cordato notes. “Trade mark registration lasts for many years – seven years initially, extendable continuously in 14-year cycles into the future without limitation, provided renewal fees are paid. Domain names can be registered as trade marks, complete with the www. Domain names can be registered as trade marks separately to the registration of the name itself as a trade mark.”

A specific use must be nominated to register a trade mark. The trade marks register is divided into classes, which are categories in which a trade mark can be registered. The travel industry registers its trade marks in class 39 which has 3 sub-classes, as follows: CLASS 39: Transport; packaging and storage of goods; travel arrangement. Additions are permissible to these sub-classes of use.

Cordato’s book Australian Travel & Tourism Law (4th Ed) includes a relevant case summary relating to an application to register a domain name as a trade mark, heard in 2001 and involving Tourism Queensland and a company called Dectar Ltd. It was heard by a Delegate of the Registrar of Trade Marks at the Australian Trade Marks Office.

Facts: Dectar applied for registration of www.sunlover.com.au as a trade mark under trade mark Class 39 being for transportation of tourists, arranging of tours and travel consultancy services. It already had a ‘Sunlover’ trade mark registered in 1996, had used the name since 1989, and had ‘Sunlover’ as a registered business name. Tourism Queensland objected to the application because it was the holder of numerous trade marks with the words ‘Sunlover Holidays’ which it had used for many years (since 1986) in promotional material advertising its wholesale travel and holidays in Queensland. It had maintained a website www.sunlover-holidays.com.au since 1998. Evidence was given of confusion by the travel industry and the public between the respective trade marks and website addresses as to providing ‘travel services’.

The Delegate: compared the respective trade marks, focusing upon the use of the word ‘Sunlover’ in the domain names, and taking into account their similarity. It recognised the goodwill built up by Tourism Queensland by its use of its trade marks. It held that the trade mark applied for was likely to deceive or cause confusion to the public if it were allowed to be registered for ‘travel consultancy services,’ and therefore deleted ‘travel consultancy services’ as a permissible use of the trade mark, but allowed the trade mark to be registered for ‘transportation of tourists’ and ‘arranging of tours’, which were activities that Tourism Queensland did not engage in.

Cordato concludes: “The lesson here is that once you ensure the legal aspects have been arranged correctly, you can market as much as you like. If you don’t close the back door, the more successful you are, then the more likely it is that someone will come up with a similar name in the hope of trading off the reputation that you have built up so carefully. Also, if the time comes to sell the business, you’ll be thankful that you took all necessary steps to legally protect your brand. It will enhance the goodwill of the business and therefore the price.”

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Anthony Cordato is the author of Australian Travel & Tourism Law (4th Ed) and an expert in travel law. To order his book, visit www.tourismlegal.com.au. His legal firm, Cordato Partners, Business, Property & Tourism Lawyers, offers specialist legal advice to the travel industry and he provides a 15-minute free advisory service which is available by telephone (02) 8297 5600 or by email - ajc@tourismlegal.com.au.
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