Frequently Asked Questions

A trade mark is a brand. In legal terms it means it is a sign used to distinguish a trader’s goods or services from the goods or services of others. Most trade marks consist of words or images, or combinations of the two. However, it is also possible to register colours, shapes, sounds, aspects of packaging and combinations of these elements.

Trade marks and their associated goodwill are often the most valuable asset of a business. The increase in online commerce and social media has enhanced the importance of trade mark protection significantly. Any misuse of a trade mark can significantly harm business reputation, and these effects are magnified by the ease with which consumers can make their purchasing decisions and express their opinions online.

Online commerce and social media sites also have mechanisms that allow brand owners to protect their rights. Generally, these can only be used if a trade mark is registered.

Trade mark law is designed to protect brands. Copyright law is designed to protect creativity. Trade mark registration provides the owner with legal rights to exclusive use of the trade mark for the goods or services for which it is registered.

Copyright automatically gives rights in original works (including artistic, literary, musical and dramatic works). These rights allow the copyright owner to stop others from making unauthorised copies or adaptations. A brand may benefit from some limited protection under the law of copyright. For instance, copyright may give some protection for brand logos as artistic works. In some cases, this may be enough to allow the copyright owner to prevent direct copying of the logo.

However, copyright is highly unlikely to give any protection for a brand name. Brand names generally do not qualify as literary or artistic works. Relying on the law of copyright is therefore a poor strategy for protecting a brand.

A registered trade mark has the following significant advantages over unregistered marks:

• The registered owner has strong enforceable rights under statute. To infringe a registered mark, the infringing mark only needs to be likely to cause confusion, which is a broader test than is the case for unregistered marks.
• A registered trade mark can also be enforced without having to prove reputation in the mark
• A registered trade mark provides a statutory defence against allegations of infringement of other registered trade marks.
• A registered trade mark can be assigned with or without goodwill.

Registering a business name is compulsory where a person (including a company) intends to trade under a name that isn’t their own. There are penalties for not registering a business name. However, a registered business name does not provide any enforceable rights. A registered business name also does not prevent someone else registering the same name as a trade mark.

In short, a registered business name does not provide any effective protection for a brand. Only a registered trade mark provides strong statutory rights that allow a business to stop others using a confusingly similar name.

A URL is potentially registrable as a trade mark, and is assessed the same way as any other trade mark. However, often it is better to simply register the URL identifier (i.e. the brand component), rather than the URL as a whole. The exception is in cases where the URL as a whole is the brand of the business.

Theoretically, anything can be registered as a trade mark. However, in reality, it is often difficult to register descriptive marks. In some cases, a descriptive mark will have acquired through use a significant reputation in the marketplace. In these cases, the descriptive mark can be registered.

Ownership of a trade mark can be a complex issue. If no-one has used or registered the trade mark, the first person to apply for registration who has a genuine intention to use the mark will often be considered the owner. If a trade mark has been used, the first user is generally considered the owner (unless someone else has applied to register the mark before the date of first use).

Ownership rights in a trade mark can also be assigned to another person. In these cases, the ‘assignee’ can be considered the owner.

Yes. Provided their respective uses are not likely to cause deception or confusion to consumers. For example, ‘Pulsar’ is used by different owners on motor vehicles (Nissan) and watches (Seiko). There are also other limited situations where different people can own the same mark, even if it is for the same or similar products. For instance, if two people adopted the same or very similar mark honestly and without knowledge of the other, they both may be entitled to registration.

The initial term of registration is 10 years from the filing date. The registration can be renewed for further periods of 10 years each. In some countries a trade mark can remain registered indefinitely provided that renewal fees are paid and it is not challenged by another person.

In some countries (for instance, the USA), it is necessary to file evidence of use periodically to maintain the trade mark.

A registered trade mark only provides enforceable rights in the country in which the mark has been registered. However, registering a trade mark in one country can make it easier to register the trade mark overseas. For most businesses, registering their trade mark in their main country of operations is the first step towards obtaining protection in key markets of interest.

Rules differ by country. In Australia for example, trade mark registration that is at least five years old and is not used for a continuous three-year period, can be removed from the register for non-use. This generally only happens where another person applies to the Registrar to have the mark removed. Similar rules apply in other countries, although the relevant periods may differ.

It is not compulsory to use the ® or (TM) symbol. However, for a registered trade mark, the owner can choose to use either the ® or (TM) symbol. For an unregistered trade mark, the (TM) symbol can be used. It is an offence of the Trade Marks Act 1995 to use the ® symbol for a trade mark that is not registered.

We recommend that you speak with one of our attorneys regarding your trade mark protection needs. We will advise on the required steps and costs involved. Please contact us for more information.