Want a Blue Tick Next to Your Business Emails? You May Need to Register Your Logo as a Trade Mark
Businesses invest heavily in their websites, branding and social media presence. Yet when an email reaches a customer’s inbox, it may still appear as little more than a name, an email address and a generic coloured circle.
Brand Indicators for Message Identification, commonly called BIMI, can allow participating email services to display a business’s logo beside authenticated emails.
For businesses using Gmail, the most recognisable result is a branded logo accompanied by a blue authenticated checkmark—effectively an email “blue tick”.
Getting there, however, involves more than uploading a logo.
What is BIMI?
BIMI is an email standard that allows a business to publish its approved logo through its domain-name records.
When the business sends an email, a participating mailbox provider can check whether:
- the email genuinely came from an authorised server;
- the sending domain has adequate anti-spoofing protections;
- the logo has been identified in a valid BIMI record; and
- where required, an authorised certificate confirms the connection between the business, its domain and its logo.
If those requirements are met, the recipient’s email provider may display the business logo beside the message.
BIMI is administered and developed through the AuthIndicators Working Group, commonly known as the BIMI Group. The BIMI Group maintains the relevant specifications and recognises approved organisations that can issue BIMI-related mark certificates.
What is the Gmail blue tick?
Gmail may display a blue authenticated checkmark for businesses that use BIMI with a qualifying Verified Mark Certificate, or VMC.
The checkmark is intended to provide recipients with an additional visual indication that the sender’s identity and logo have been independently verified.
It should not be confused with social-media verification. It does not mean that Google endorses the business or guarantees the contents of an email.
Instead, it indicates that the message has satisfied Gmail’s relevant authentication and brand-verification requirements.
What does a business need before applying for a VMC?
A business will generally need several technical and legal components in place.
1. A properly configured email domain
The business must authenticate its outgoing email using systems such as:
- SPF;
- DKIM; and
- DMARC.
The visible From address must align with an authenticated domain. It is not enough for an email merely to pass SPF or DKIM under a different domain.
2. An enforced DMARC policy
For BIMI, the domain will generally need an enforcement-level DMARC policy, such as:
p=quarantine
or:
p=reject
A monitoring-only policy of p=none will generally not be sufficient for full BIMI implementation.
3. A BIMI-compatible logo file
The logo must be prepared in the required SVG format and hosted at a publicly accessible HTTPS address.
Not every ordinary website SVG file will satisfy the BIMI technical requirements.
4. A Verified Mark Certificate
For the Gmail blue authenticated checkmark, the business will ordinarily require a VMC issued by an approved Mark Verifying Authority.
The issuer independently verifies matters such as the business’s identity, control of the relevant domain and its right to use the logo.
Why does the logo need to be registered as a trade mark?
A VMC is generally intended for a logo protected by a qualifying registered trade mark.
Registering a business name with ASIC does not, by itself, give the same protection as registering a trade mark. Similarly, owning a domain name or using a logo on a website does not necessarily establish registered trade mark rights.
Australian trade marks are administered by IP Australia.
A trade mark can protect a range of signs, including:
- words;
- business names;
- logos and images;
- shapes;
- colours;
- sounds; and
- combinations of these elements.
For VMC purposes, the precise logo intended to appear in email may need to correspond with the registered mark accepted by the certificate issuer.
A business that has registered only its name as a word mark should not automatically assume that every graphical version of its logo will qualify.
Should a business register its name, its logo, or both?
That depends on the brand and how it is used.
A word mark can protect the business name independently of a particular font, colour or logo treatment.
A logo mark protects the particular graphical representation shown in the application.
In many cases, a business may benefit from considering separate applications for:
- the business name as a word mark; and
- the logo or composite brand as an image mark.
The appropriate goods and services must also be selected. Trade mark protection is divided into classes, and the application should accurately cover the activities for which the mark is or will be used.
An application that is too narrow may leave important business activities unprotected. An application that is drafted too broadly can create unnecessary cost or increase the risk of objections and conflicts.
What if the logo is not registered?
A business may be able to obtain a Common Mark Certificate, or CMC, for a logo protected through established prior use.
A CMC may allow the logo to appear in supported inboxes, including Gmail and Yahoo, but it generally does not provide Gmail’s blue authenticated checkmark.
The BIMI Group introduced CMCs as an alternative for businesses that use an established logo but do not have a qualifying registered trade mark.
A CMC is not necessarily a cheap shortcut. Certificate providers may still require substantial evidence of prior use, and the annual cost can be close to the cost of a VMC.
For a business investing in a long-term brand, trade mark registration may therefore provide broader value than purchasing a CMC alone.
How much does a VMC cost?
VMCs are commercial certificates and ordinarily require annual renewal.
At the time of writing, major certificate providers advertise VMCs at well over US$1,000 per year. Australian businesses should also account for exchange rates, GST and any reseller or transaction charges.
That certificate cost is separate from:
- IP Australia application fees;
- legal or trade mark attorney fees;
- email configuration work;
- DNS management;
- preparation of a compliant SVG logo; and
- ongoing domain and email-hosting expenses.
There is presently no free, automated equivalent to Let’s Encrypt for VMCs.
VMCs require legal and organisational validation that goes beyond proving technical control of a domain.
Is the blue tick worth it?
That depends on the business.
It may be particularly valuable for organisations that:
- send invoices or payment instructions;
- regularly communicate with customers by email;
- operate in sectors commonly targeted by impersonation or phishing;
- have a valuable or recognisable brand;
- send high volumes of customer communications; or
- want their email branding to appear consistently in supported inboxes.
For a law firm, financial business, property business, healthcare provider or online retailer, authenticated branding may reinforce confidence in genuine communications.
However, BIMI should not be treated as a substitute for sound email security.
The priority should remain:
- correct SPF;
- aligned DKIM;
- enforced DMARC;
- monitoring for unauthorised use of the domain; and
- appropriate security controls around user accounts and email systems.
How Nmap Law can help
Nmap Law can assist Australian businesses that want to protect their brand and prepare for a VMC application.
Depending on the circumstances, our assistance may include:
- reviewing whether a business name or logo is suitable for trade mark protection;
- conducting preliminary searches for conflicting Australian trade marks;
- advising whether to apply for a word mark, logo mark or both;
- identifying appropriate goods and services classes;
- preparing and filing an Australian trade mark application;
- responding to examination issues raised by IP Australia;
- advising on ownership of a logo created by an employee, designer or contractor;
- reviewing branding arrangements and intellectual-property assignments;
- coordinating with the business’s IT provider, certificate issuer or email administrator; and
- advising on the trade mark documentation likely to be needed for a VMC application.
Registering a logo as a trade mark can provide benefits extending well beyond BIMI. It may also assist a business in protecting its brand against confusingly similar names, logos and commercial use by competitors.
Planning ahead
Trade mark registration is not immediate.
An application ordinarily takes several months to progress through examination, and objections, acceptance, opposition and registration timeframes may still need to be addressed.
Businesses considering a Gmail blue tick should therefore begin the trade mark and email-authentication work well before a planned launch, rebrand or major marketing campaign.
Speak with Nmap Law
Nmap Law can help your business assess whether its name and logo are adequately protected and whether trade mark registration should form part of its BIMI and email-verification strategy.
We can assist with the legal trade mark component and work alongside your technical provider to help ensure the brand identified in the trade mark application matches the brand the business intends to use in authenticated email.
This article provides general information only and is not legal or technical advice. BIMI display is controlled by individual mailbox providers and is not guaranteed. Certificate requirements, provider support, fees and technical standards may change.