Why seek trade mark protection?
While unregistered trade marks may be protected under the
common law, fair-trading legislation or copyright law, protecting
your trade mark without registration can be difficult and expensive.
There are a number of distinct advantages in registering
your trade mark, rather than relying on common law rights.
As the owner of a registered trade mark, you:
*Have exclusive rights to use, authorise other people to
use, and sell your registered trade mark within the class of
goods or services specified in your application.
*Have a registered trade mark that covers the whole of
Australia, rather than just the specific region or state in
which you trade. If you wish to expand overseas, a registered
Australian trade mark also provides a solid basis for
trade marking rights in other countries, even before you
commence trading overseas.
*Can be in a stronger position to stop other people using
your trade mark in relation to similar goods or services as
those specified in your application. If you have a registered
trade mark, you do not have to prove the existence of a
reputation in the registered trade mark in order to stop
others using it.
*Can determine whether your proposed trade mark is
likely to infringe a trade mark that has already been registered.
The registration process can prevent legal action
being taken against you.
*File a notice with the Australian Customs Service, objecting
to the importation of goods that infringe your registered
trade mark. In doing so, you can prevent international
competitors from encroaching on your market share and
local competitors from importing counterfeit goods.
*Can prevent the rise of competitors within your defined
class of goods and services.
*Other people, traders and consumers can quickly and
easily determine whether you have a monopoly over the
use of your mark for particular goods or services.
Trade Marking Words and Graphics
Typically, a trade mark consists of both a written and a graphical
component. When it does, you should seek a minimum of two
registrations: the combination of the written and graphical component;
and the written component alone. If the pictorial component
can be easily separated from the written component, a third
registration may be required for the graphical element alone.
For example, the Nike logo could be protected by three separate
trade mark registrations: the Nike tick (graphical element); the
word ‘Nike’ (written element); and the combination of the two.
Trade Marking Words
Where a trade mark consists solely of words, it should be lodged
using plain black capital letters. This form of registration offers
much broader protection; it safeguards any style, colour or font
of the trade mark, rather than a specific style only. If a particular
style, colour or font of the word has branding significance, then
two registrations can be lodged: the plain trade mark; and the
stylised trade mark.
Trade Marking Domain Names
If your trade mark is used as a domain name, it is often worth
registering the word in the form that it appears in that domain
name, that is, without spaces or hyphens between words and
without suffixes (such as .com or .com.au). This type of registration
is usually necessary only for very generic, or very descriptive,
Trade Mark Series Application
You can apply to register more than one trade mark on one application
if the trade marks are essentially the same. This is called a series application. To qualify as a series application, the differences between the trade marks must be extremely minor.
A trade mark is used to distinguish the goods or services of one trader from another. It is a way to identify your unique brand and can be a valuable marketing tool. Trade marks foster customer loyalty and demonstrate the value of your products and services. Protecting your trade mark is a business imperative.
According to the Trade Marks Act 1995, a trade mark may be granted for a name, symbol, device, word, letter, sound, smell, logo, image, packaging or any combination of these elements. Some well-known trade marks include McDonald’s golden arches, Coca-Cola’s distinctive red and white packaging and Google’s colourful font. The main criterion of successful registration is that the trade mark must distinguish goods or services. Trade marks which are descriptive, which consist of commonly used words (like ‘great’) or commonly used graphics (like pipes for a plumber) are difficult to register. You will not be granted a monopoly on words or graphics that other people may legitimately need to describe their own goods or services. When registering a trade mark, you must provide a description of the goods or services for which you intend to use your trade mark. Your trade mark is then registered within one or more of 45 classes of goods and services. These classes range from telecommunications, construction and medical services to chemicals, meats and alcoholic beverages. The only exception is where the trade mark is to be used for ‘defensive trade mark’ purposes.
Once you have registered your trade mark, you have the legal right to use, licence or sell it within Australia for the class of goods and services for which it is registered. You also retain the right to prevent other parties from using it. If you decide not to register your trade mark, there is always the possibility that someone else might; then they will have the right to prevent you using it. Your intellectual property is a valuable asset.