What is a trade mark?

A trade mark is a ’sign’ that distinguishes your goods or services from those of other traders. Most people are familiar with trade marks that consist of words and logos, but a trade mark can be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent – or a combination of these things.

Examples of some well-known trade marks include:

  • Coca-Cola
  • McDonald’s yellow ‘M’ (golden arches)
  • The Nike swoosh
  • Apple (logo)
  • Adidas ‘three stripes’

There are two categories of trade marks:

  1. A registered trade mark.
  2. Trade marks that are not registered, often referred to as unregistered trade marks or common law trade mark.

What is a registered trade mark?

A registered trade mark is a trade mark that has been registered with the trade marks office or trade marks registry in a particular jurisdiction. In the same way that a home owner obtains a certificate of title as proof of ownership, a trade mark owner obtains a registration certificate as proof of ownership when a trade mark is registered.

The owner of a registered trade mark has certain rights such as:

  • The exclusive right to use the mark in relation to the goods/services for which it is registered.
  • The right to take action for infringement against a third party using a substantially identical or deceptively similar trade mark for the same or similar goods/services.
  • The right to sell, licence and mortgage the trade mark.

What is an unregistered or common law trade mark?

Trade mark registration is not compulsory in Australia. Certain rights accrue at common law for marks which are used, but have never been registered. In cases where a trade mark is not registered, there is no certificate establishing proof of ownership. This can make it difficult to take legal action against a party who is using the same or a similar trade mark.

Generally, unless the party using the unregistered trade mark has established a reputation in the mark and can show that the use of the same or similar mark by a third party is confusing, it may be expensive and difficult to stop that use.

Why should I use a trade mark attorney to help me select and protect my trade mark?

A trademark attorney can help you to select a trade mark that is not going to impinge on anyone else’s rights. They will also help you to obtain the appropriate level of protection for your particular trade mark, taking into account your commercial objectives and budget. Our trade mark attorneys specialise in all aspects of trade mark registration, protection and enforcement. They are experts in dealing with examination reports and other issues that arise during the trade mark application process.

Advantages of registering your trade mark

There are many advantages to registering your trade mark as opposed to relying on common law rights, including:

  • Exclusive right to use the mark in relation to the goods/services for which it is registered.
  • Ability to enforce your rights against third parties more easily than if your mark is not registered.
  • Ability to licence or sell your trade mark to another party.
  • Deterrent to other parties seeking to use or register the same or a similar name.
  • Ability to file a Customs Notice to prevent the importation of counterfeits.
  • Providing a relatively cost-effective and easy basis for taking legal action against a third party using the same or similar trade mark in relation to the same or similar goods/services.

How is a trade mark different to a business name, company name and domain name?

Business names, company names and domain names are required to be registered with the relevant authorities. Another party will not be able to register a business, company name or domain name that is identical to your own business, company or domain name.

Trade marks and business names

Business names and company names are required to be registered with the Australian Securities and Investment Commission (ASIC). Registration can prevent another party from registering the identical business or company name. However, registration of a business or company name does not give the registrant any proprietary rights to the name and will not necessarily prevent other parties from using that name (or a similar name) as a trade mark in respect of their goods/services.

® and ‘TM’ symbols

The registered trade mark symbol ® must only be used next to a registered trade mark. The ‘TM’ symbol may be used next to a registered or unregistered trade mark. It gives third parties notice that you consider a particular sign to be a trade mark.

How do I register my trade mark?

To register a trade mark you must file a trade mark application with the relevant trade marks office or registry. In Australia, the Trade Marks Office is part of IP Australia. Generally, the application must satisfy certain formality requirements. This includes specifying in the application the goods and services you wish to use the mark for. These goods and services determine the scope of your trade mark protection. If you would like help registering your trade mark you can contact us via info@pof.com.au.

Why should I do a trade mark clearance search?

The trade mark you have selected may infringe the rights of the owner of an existing registered trade mark. Your trade mark may also impinge on the legal rights of a party that is using unregistered trade mark. In either case, the use of your mark could result in legal action.

If I have a registered trade mark in Australia, is it valid in other countries?

Trade mark protection is generally granted on a country by country basis. An Australian trade mark registration is not recognised outside of Australia. Thus, if you are using your trade mark in other countries, such as New Zealand, United States and China, it is necessary to obtain trade mark protection in each country.