What is a trade mark?
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.
Why are trade marks important?
Trade marks and their associated goodwill are often the most valuable asset of a business.
The increase in internet 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.
What is the difference between trade mark protection and copyright protection?
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 throughout Australia 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.
What are the advantages of registering a trade mark?
In Australia, it isn’t compulsory to register a trade mark. An unregistered trade mark has some protection under the common law tort of ‘passing off’, and the Australian Consumer Law.
However, protecting an unregistered trade mark requires evidence of reputation in the mark. An unregistered trade mark will also only be protected where use of an infringing mark is likely to mislead or deceive. Rights in an unregistered mark can also be limited to a particular geographic area.
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 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 gives rights Australia wide.
- A registered trade mark can be assigned with or without goodwill.
I have registered my business name, so why should I register a trade mark as well?
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.
What searches should I do before using my new trade mark?
In Australia, a search of the Australian Trade Marks Office database should be carried out, along with an internet search for relevant unregistered trade marks.
It is a good idea to do a brief search yourself for any identical marks on the Australian Trade Marks Office database. This will give you some idea whether your new trade mark is likely to be available.
However, even if your initial search looks positive, it is very important to have a thorough clearance search conducted by an IP professional. An attorney can find problems that you might not recognise. Also, an attorney can find solutions to problems that you might think are unsolvable.
It is also important to realise that while IP Australia conduct a search on any new application, this is not a full clearance search. IP Australia searches are conducted according to particular criteria, and do not cover unregistered marks. Also, IP Australia cannot provide commercial advice on the best way to deal with any potential problem.
If the mark is to be used overseas, searches should also be conducted in the countries in which the mark will be used, or where goods bearing the mark will be manufactured.
Can a URL be trademarked?
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.
Can I register a descriptive term as a trade mark?
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.
Who owns a trade mark in Australia?
Ownership of a trade mark can be a complex issue.
Generally speaking, 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 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.
Can two or more persons have the same trade mark?
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.
How long can a trade mark be registered?
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 Australia, a trade mark can remain registered indefinitely provided renewal fees are paid and provided that 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.
Does an Australian trade mark registration only apply in Australia?
A registered trade mark only provides enforceable rights in Australia.
However, registering a trade mark in Australia can make it easier to register the trade mark overseas. For most Australian businesses, registering their trade mark in Australia is the first step towards obtaining protection in key markets of interest.
What happens if a registered trade mark is not used?
If an Australian trade mark registration is at least five years old and is not used for a continuous three-year period, it 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.
How should I identify my trade mark?
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.
Where should I start?
We recommend that you speak with one of our attorneys regarding your protection needs. We will advise the required steps and costs involved. Please contact us for more information.