It can be a word, phrase, image (such as a logo), smell, number, sound, colour, movement, packaging or another symbol.  Protection may be best achieved with a combination of these. The law of trade marks has developed to assist organisations in communicating a badge of origin and allow for some exclusivity to ensure consumers know the source of goods or services. The law helps businesses to protect their unique branding and their hard-earned reputation.

The Australian Register of Trade Marks is operated by IP Australia, an agency of the Commonwealth Government. Registration allows you to assert exclusive rights over your trade mark and gives you the legal right to use the reserved ‘®’ symbol. Using the ® symbol without having registered your trade mark is unlawful.

Your business name can be a trade mark, but merely registering the business name on ASIC’s Business Names Register will not give you trade mark protection.  To ensure adequate protection, it is worth seeking advice as to whether to register your business name as a trade mark with IP Australia.

If you haven’t yet applied for registration, or your application has not been approved, you can still use the ‘TM’ symbol as a way of warning competitors that you assert your rights over the trade mark. If a competitor tries to use an unregistered trade mark, you may in some cases be able to sue them for ‘passing off’ (i.e. for falsely pretending that there is a connection between their business and yours) or seek remedies under the Australian Consumer Law (schedule 2 of the Competition & Consumer Act 2010 (Cth)) for misleading and deceptive conduct in trade or commerce.

What can’t be a Trade Mark?

Generally, a trade mark won’t be accepted for registration if it is scandalous or illegal, or if it has any connotations that might deceive or cause confusion. It also can’t be substantially identical or deceptively similar to someone else’s trade mark.  A trade mark also needs to be inherently distinguishing, and not be a descriptor (for example a lawn mower supplier called “The Law Mower Company” would be not capable of trade mark protection due to it describing the goods being offered).

In fairness to competitors, your trade mark must also be sufficiently specific to your business. For instance, you generally can’t register trade marks that are geographical names, as that would prevent other local businesses from using the name of the location on their products. You also generally can’t register trade marks that are common surnames, or that are commonly used to describe the type of goods or services that you provide.

Benefits and Limitations of Trade Marks

A trade mark is a valuable business asset; and registering it can bring added value should you ever choose to sell your business. You are also entitled to sell or licence the trade mark to another person.  There are numerous ways to value trade marks and accounting standards can apply to how to identify and value the goodwill attached to a trade mark.

If a competitor uses a trade mark that is too similar to a trade mark that you have registered, you may be able to get a court order that prevents the competitor from using that trade mark and/or requires them to pay you compensation.

Unlike copyright, trade marks can last indefinitely, but must be renewed every ten years. You may lose the rights to the trade mark if you cease to use it.

Ordinarily, registering your trade mark only gives you exclusive rights within Australia. However, you may be eligible to register and protect your trade mark in up to 130 countries under the subsequent designation via the Madrid System administered by the World Intellectual Property Organization using IP Australia as an office of origin.  You may also consider applying directly within a country not otherwise covered under the Madrid System, or there may be practical considerations regarding whether or not to utilise the Madrid System.

You should also be aware that countries have either a ‘first to use’ system or a ‘first to file’ system.  In first to file countries, it is vital you protect your brand through trade mark protection if you wish to operate your business in that country.  In Australia, we have a ‘first to use’ system which means if someone else registers your unregistered trade mark, you can make an application for being the predecessor in title.  It is vital that you seek legal advice in this regard to ensure you can monitor applications and meet the timeline requirements for providing opposition to the registration of a trade mark.

Applying for a Trade Mark

The process of registering a trade mark generally takes at least six months. Once you have completed your initial application, a registrar will examine it to see whether your proposed trade mark complies with the Trade Mark Act 1995, Trade Mark Regulation 1995 and any other relevant legislation.

If your application receives an adverse examination, you will be given an opportunity to be heard and to have the matter reassessed.

If your application is accepted, it will be advertised in the Official Journal of Trade Marks. Anyone else who thinks that your trade mark ought not to have been accepted, or who claims that your trade mark is too similar to theirs, will generally have two months to submit an application to oppose the registration of your trade mark. The dispute will be heard by a registrar who will decide whether or not to register your trade mark.

For more information regarding trade marks, please contact our Commercial Team or call us on 1300 862 529 to book an appointment with one of our specialist Commercial Lawyers today.

This article was written by Martin Churchill & Tim Whincop.