What is a trade mark?
A trade mark is a ‘badge of origin’ that identifies the source of goods and services in the market. Consumers will understand your trade mark as signalling your brand’s image, values and the quality of your goods and services associated with your brand.
A trade mark also has an expressive function as it is a shorthand method of delivering a message to consumers about your brand which can elicit an emotional connection from your consumers. It is this connection that is valuable and warrants protecting as it gives your brand commercial leverage in the market. In the current information age and digital economy, very little goods and services are sold without branding or being labelled in some way.
Trade marks are not limited to a name or logo, rather a trade mark can include a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or some combination of these elements. Other features you can protect with a registered trade mark include your slogans, catch-phrases, jingles, distinctive colour schemes, or even Twitter hashtags.
In Australia there are two types of trade marks, those registered under the Trade Marks Act 1995 (Cth) (Trade Marks Act) and those that are unregistered, often referred to as common law trade marks.
Registered trade marks are far more valuable and useful to your business than common law trade marks. The key reasons for this are:
- ownership of a registered trade mark is as set out in the Official Trade Marks Register administered by IP Australia whereas the owner of a common law trade mark has to establish ownership through evidence;
- registered trade mark owners can sue for trade mark infringement whereas common law trade mark owners cannot; and
- registered trade marks are intangible personal property that can be assigned, licensed and the subject of a security interest whereas common law trade marks are not afforded the same status.
Your name is not enough to protect your brand - online or off
Business owners should be aware that a business name, company name, or domain name provides only limited protection. Registration of a business or company name may only give rise to common law trade mark rights.
Further, it is possible that registering a business name could infringe another party’s registered trade mark rights as the government departments responsible for trade marks and business names are distinct. It is up to businesses to protect and enforce their branding.
Registration of a trade mark provides:
- the exclusive legal right to use, licence and sell your mark in Australia;
- protection of the identity of your goods and services, and prevents others from imitating your brand;
- legal protection and enables you to stop others trading with it;
- rights of enforcement against other traders who use a mark deceptively similar to yours; and
- the ability to have the above rights in perpetuity if you continue to renew your trade mark and comply with the formalities under the Trade Marks Act.
The goodwill of your business can be significantly damaged by someone else who sells goods which are represented as being the product of your business but are of an inferior quality.
If you are interested in protecting specialist or specific branding (online or traditional) with a registered trade mark, you can get in contact with our team by email on firstname.lastname@example.org or call 1300 565 846.
What are the advantages of registering a trade mark?
By registering your trade mark, you can:
- turn it into a valuable asset when you value or sell your business;
- sell your registered mark or license the use of it to another;
- protect your brand throughout Australia;
- more easily and quickly stop others from using your it.
A registered trade mark has the added legal protections of the provisions of the Trade Marks Act.
Applying for a trade mark
The Trade Marks Act prescribes some criteria for a prospective trade mark to meet in order to be granted registration. Businesses often seek expert legal advice in relation to these criteria, to assist with any preliminary due diligence and advice in relation to the proposed trade mark and preparing the application. Specialist advice such as that offered by our team of experiences lawyers can help you secure the maximum protection of your mark as well as provide strategic advice to maintain market position and block competition.
If you decide to apply for registration of your trade mark, you must describe your goods and/or services as part of your application. For administrative convenience, goods and services are divided into 45 classes across for goods and services and many possible ‘claims’ (the legal term for descriptions of goods and services) within each class. In order to protect your business, you must submit an appropriate claim. If your claims are false or inaccurate, your application risks encountering problems and ultimately, your mark may risk removal for non-use.
The registration process
IP Australia examines your application to ensure your trade mark complies with the Trade Marks Act and is registrable and that the filing requirements have been met. If accepted, IP Australia will publish your trade mark in the Australian Official Journal of Trade Marks. Interested third parties then have two months within which to oppose your mark on specific legal grounds. The process is set out below:
Once registered, you have the exclusive legal right to use, license and sell your trade mark in Australia for 10 years commencing on the submission date of the trade mark application.
To continue registration a mark may be renewed every 10 years. Protection is granted from the date of filing and priority is given on a first in time basis. If your business is considering registering a trade mark you are best not to delay registration as it may prejudice your rights and ability to successfully obtain registration.
International Trade Marks
Trade mark registration and protection is territorial. It is a well established principle that it is not an offence to copy a foreign trade mark which highlights the importance of ensuring your trade mark has protection in every jurisdiction you do business.
Trade marks can be protected internationally by making individual foreign applications in each company or by obtaining an international registration using the Madrid - The International Trade Mark System (Madrid System). If you file a trade mark application in Australia, you have a right of priority for up to 6 months from the first filing date in other member countries. By claiming convention priority in the application within the 6 month deadline, the applications in the other countries are treated as if they were filed 6 months earlier.
Each member country has its own trade mark or intellectual property office, and will examine the application independently of the other countries and in accordance with their own timelines and practices. It could be the case that the trade mark application is accepted for registration in some countries but not others.
Our lawyers have demonstrated experience obtaining and prosecuting international trade mark applications. If you are interested in international trade mark applications, you can get in contact with our team by email on email@example.com or call 1300 565 846.
Trade mark infringement occurs if a person uses ‘a trade mark’ that is substantially identical with, or deceptively similar to, your registered trade mark in the same or similar goods or services class in which yours is registered.
Substantially identical - This test is a side-by-side comparison with their differences and similarities noted, having regard to the essential features of the trade mark and the total impression of resemblance or dissimilarity.
Deceptively similar - The test focusses on the likelihood of deception and whether the resemblance between the two marks causes a real and tangible risk of deception or confusion.
If you wish to enforce your trade mark rights your best first step is to notify the alleged infringer (by way of a letter) indicating that they are infringing your rights.
If you wish to take matters further then you are at liberty to commence action against the alleged infringer. A court may grant an injunction, damages or an account-of-profits.
If infringement is proven, a permanent injunction will be put in place to prevent the infringer from undertaking any further infringing conduct. The infringer will not be able to continue their conduct without a licence to do so from you.
Damages compensate the owner for losses suffered as a result of the infringement. Where the infringers have sold or benefited financially from the infringing goods, the court may order that they pay you a sum equivalent to the profits they made from using your trade mark.
How we can help
Often your best approach when looking to apply for a trade mark is to seek expert legal advice.
Our team of experienced lawyers can help you with the process of trade mark registration by:
- undertaking trade mark availability searches and providing strategic advice in relation to your prospective trade mark application;
- notifying you of likely impediments to successful registration, including any registered or unregistered conflicts and providing legal advice on potential consequences of conflicts;
- submitting an application for your trade mark in one or more classes;
- providing step-by-step progress reporting; and
- providing legal advice on best options to overcome any requisitions or issues raised by IP Australia.
 Note there are other grounds of trade mark infringement under s 120 of the Trade Marks Act 1995 (Cth).