What is a Trade Mark?
A Trade Mark is a brand name, a representation or “sign” used to distinguish the Goods or Services.
A Trade Mark is a brand name, a representation or “sign” used to distinguish the Goods or Services of one business from those of its competitors. A Trade Mark may take the form of a word, logo, colour, shape, scent or sound and is filed in one or more of 45 Classes.
A Registered Trade Mark allows you to stop other traders from using your Trade Mark in respect of the Goods/Services for which your Trade Mark is registered. In addition, protection afforded by registration extends to cover similar Goods and Services and to similar Trade Marks.
If you do not register your Trade Mark, it can be difficult and expensive to stop someone else from using it. For example, it might be necessary to establish that the other party is passing themselves off as your business and trading off your business reputation. Protecting your Trade Mark through the Court process requires considerable effort and evidence to establish that because of the strong reputation of your business, a customer would be likely to think that the other traders’ Goods/Services are actually produced by your business.
The difficulty that traders frequently encounter when seeking to register a Trade Mark, is that their selected Mark is descriptive of their Goods/Services. Where other traders could, in good faith, wish to use the selected word in relation to the same Goods/Services, the Trade Marks Office is unlikely to allow registration, unless there has been significant prior use.
Therefore, invented words are usually the best Trade Marks to try and register as they are new, generally distinctive and non-descriptive of the Goods/Services. Examples of successful invented words are KODAK® and EXXON®. These words do not convey any meaning.
Words to avoid are those related to the Goods/Services upon which the Trade Mark will be used, as well as words that indicate a quality or property of the Goods/Services, such as ‘best quality’ or ‘choice’. These are words that other traders in the same field should be able to use in the course of trade to fairly describe their own Goods/Services.
Registration of distinctive logos as Trade Marks can also be sought. However, your protection is limited to the logo that you have filed with the Trade Marks Office, although you are able to stop others from using a Trade Mark that is ‘deceptively similar’ to your own. Accordingly, if you have a logo, you must continue to always use it in the identical way, otherwise you will not be fully protected by your Trade Mark Registration.
Ideally, you will be able to obtain protection for a word Trade Mark, since registration of a word protects its use in all situations. You are not limited to a colour, font or size, and your word Mark can even appear as part of a logo.
While the advice of a Trade Mark Attorney is often sought after a problem arises, Houlihan² encourages its Clients to consult us regarding potential Trade Marks and logos before seeking registration thereof. This can avoid significant expenditure on an Application that may not be successful down the track. We can also perform searches of various local and international databases and provide you with an opinion on the availability and registrability of your favoured mark.
Registration of a Company or Business Name does not confer Trade Mark rights in that name. Some businesses have been forced to cease trading under their registered Company or Business Name, because they have infringed someone else’s registered Trade Mark rights.
Before finalising your Company or Business Name, you should conduct a Trade Mark search and also consider registering your Business Name as a Trade Mark. We can assist you in this regard.
Registration of a Trade Mark is not guaranteed. You must first apply for registration and the Application will be considered by the relevant Government Authority which administers registrable Intellectual Property Rights in the relevant country.
Before registration of your Trade Mark, it is possible to indicate that you are using the word or logo as a Trade Mark by the use of the symbol “TM” after the Mark. If evidence of use of your Trade Mark is required during prosecution of your Application, the fact that you have used the symbol “TM” can be very useful.
After successfully registering your Trade Mark, you may use the ® symbol affixed to your Trade Mark.
Within six (6) months of filing the Trade Mark Application, it is possible to file an International (Madrid) Application designating the countries/regions where protection is of interest and maintain your earliest filing date (Convention Priority). An advantage of a Madrid Application is the single filing and management process for overseas jurisdictions.
Alternatively, a Trade Mark Application can be filed in any one or more countries of interest within six (6) months to claim Convention Priority.
The positioning of your Trade Mark on packaging or in advertisements is very important and has created problems for Trade Mark Owners in the past. We can provide advice on how to use your Trade Mark in order to avoid enforcement issues in the future.
It is possible to keep your Trade Mark registered for a very long time. Renewal fees become due and are payable every 10 years. However, there is a mechanism by which Trade Marks can be removed from the Trade Marks Register, if they are not being used and have remained unused for a specified period of time. Therefore, once you have filed a Trade Mark Application, you must use it on your Goods or in connection with your Services.
If you notice someone else using a Trade Mark similar to yours and on similar Goods/Services, it is important to stop them as soon as possible. This will prevent your Trade Mark from being associated with another trader and thereby void the risk of losing the ability of the public to distinguish your business from that of another trader. If you allow the “infringer” to continue to use your Trade Mark, the infringer could develop a reputation of its own in the Mark and thereby be exempt from any actions taken by you to stop them from using your Trade Mark.
The advice given in this document is general in nature and designed to be a starting point for discussions with one of our Trade Marks Attorneys, who will be able to tailor advice to your specific circumstances. We look forward to the opportunity to assist you with any questions you might have.
AUSTRALIA (Head Office)
Level 1, 70 Doncaster Road
Balwyn North, Victoria 3104
P: +61 3 9851 6016
F: +61 3 9851 6004
All correspondence and hard copy mail to be sent to:
PO Box 611
Balwyn North, Victoria 3104