An effective trade mark strategy is crucial to securing your competitive advantage in an increasingly crowded marketplace. A carefully chosen trade mark can be one of your business’ most valuable assets, boosting brand identity and helping to differentiate your products and services. This fact sheet provides a comprehensive overview of the value of trade marks, as well as common questions answered about the registration process, renewals, protection and enforcement.
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); and
- the shape of the Toblerone chocolate bar.
What is the difference between a registered and unregistered trade mark?
There are two categories of trade marks: a registered trade mark and trade marks that are not registered (often referred to as unregistered trade marks or common law 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.
An unregistered trade mark is a brand name, logo, slogan or other business identifier that is being used in trade without having been formally registered with a trade mark office.
In Australia, it is not compulsory to register a trade mark and certain common law rights accrue 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 which makes it difficult to take legal action against someone who is using the same or a similar trade mark.
If the person using the unregistered trade mark has established a reputation in the mark and can show that the use of the same or similar mark is confusing, it can be both difficult and expensive to stop that use.
Why register a 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.
Registering a trade mark generally provides stronger and clearer legal protection, including exclusive rights to use the mark in connection with the relevant goods and services.
What do I need to do before choosing a trade mark?
Prior to registering your trade mark, it is important to conduct a thorough search of the local trade marks register to determine whether your chosen mark is available to use in that jurisdiction without conflicting with any existing trade mark rights.
Rather than commit to one mark, it is often a good idea to draw up a list of two or three alternatives, in case your first choice is not available. Should your application conflict with an existing trade mark, you may incur unnecessary costs and delays, or your application may even be rejected. Further, if you have been unwittingly using a trade mark which infringes someone else’s registration, you could potentially be forced to stop using it, and you may even be liable for damages or an account of profits.
Our firm can do comprehensive trade marks searches in Australia and New Zealand – providing you with a report on the availability of your chosen trade mark, potential conflicts, issues with application and practical advice on how to proceed.
What is the registration process in Australia?
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.
You can demonstrate ownership of a trade mark with symbols. The ™ symbol may be used next to a registered or unregistered trade mark – giving third parties notice that you consider a particular sign to be a trade mark. However, the registered trade mark symbol ® must only be used next to a registered trade mark.
What is the difference between trade marks, business names, company names and domain names?
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.
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.
Is a registered Australian trade mark valid in other countries?
An Australian trade mark registration is not recognised outside of Australia. If you are using your trade mark in other countries, such as New Zealand, the United States or China, it is necessary to obtain trade mark protection in each country.
A trade mark can be protected overseas on a country by country basis . Trade mark protection via an international registration can cover nearly 100 countries that are currently signatory to the Madrid Protocol.
For more information about protecting your trade marks overseas, please review our article – How can Australian businesses protect their trade marks overseas?
How often do you need to review a trade mark?
Maintaining your trade mark registration is just as important as your initial registration. If you allow your trade mark to lapse, you may lose your rights in the trade mark.
The initial period of trade mark protection in Australia is 10 years from filing. After the 10 year period, you must renew your application and pay fees in order to maintain your rights. Failure to do so may result in your registration lapsing and opens up your trade mark for use by another party.
What can you do if someone uses your trade mark?
Trade mark infringement occurs when someone uses a trade mark that is substantially identical with, or deceptively similar to, a registered trade mark, without the owner’s permission. This infringes the exclusive rights of the owner including the use, sale or licensing of the trade mark.
Depending on the situation, infringement can have a negative effect on a brand’s reputation, result in a loss of customers, and cause a decrease in sales and income for the trade mark owner.
If you have inadvertently infringed another person’s trade mark, we highly recommend engaging a trade marks attorney to advise you on the most cost-effective course to achieve a resolution.
If you believe your trade mark has been infringed, a trade marks attorney can advise you on the best course of action to stop the infringing party from using your mark, including:
- identifying the infringing party and the nature of the trade mark use
- writing and sending letters of demand
- developing strategies to alleviate risk
- negotiating licensing agreements
- managing your trade mark portfolio.
Conclusion
Trade marks play an important role in protecting the reputation, goodwill and commercial value a business builds over time. Whether you are launching a new brand, expanding into overseas markets or managing an established trade mark portfolio, taking a strategic and proactive approach to protection can help reduce risk and support long-term business growth.
With the many complexities that can arise through the registration, renewal and enforcement process, obtaining professional advice early can is an essential task to support your broader commercial objectives. Our experienced trade marks attorneys advise on Australian and international trade mark protection and are available to assist with all aspects of trade mark selection, registration, renewals and enforcement.
