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When and Why Should I Register a Trade Mark?

An introduction to Trade Mark Laws in Australia

Registering a Trade Mark is an important step for every business that has or hopes to develop goodwill and a reputation around a brand name or logo. It ensures the business will be able to monetise its reputation as it grows and moves into new locations.

In this article, we explain:

What a Trade Mark is under the Trade Marks Act 1995 (Cth),
Why you should register a Trade Mark,
When to register a Trade Mark,
What can be registered as a Trade Mark,
The benefits of registering a Trade Mark,
The risks of not registering a Trade Mark, and
What to do if your Trade Mark is being infringed.

Our Intellectual Property Lawyers provide a streamlined and cost-effective service for evaluating the registrability of Trade Mark, as well as Trade Mark registration and enforcement. To discuss any particular Trade Mark issue or proposed application, contact us for a free case evaluation.

An Introduction to Trade Marks

Trade Marks can protect both business names and the brands or logos attached to a particular product or service. A registered Trade Mark gives the Trade Mark owner the exclusive right to use the Trade Mark in relation to its goods or services throughout Australia, regardless of the location of the business.

The ability to protect a brand and reputation associated with the goods or services of a business can be critical to the survival of the business if a third party adopts a similar name or logo. This might occur where the third party intends to compete with the business but can occur simply because the party is unaware of the business, in which case the use of the similar name or logo can cause confusion and indirectly impact on a business and its customers. Having a registered Trade Mark allows a party to combat both inadvertent and deliberate infringement.

If a party infringes a registered Trade Mark by using a mark that is substantially the same or deceptively similar to the registered Trade Mark, the owner may obtain an injunction to prevent further infringement and may additionally claim damages or an account of profits.

Trade Mark registration, therefore, offers significant assurance and contributes greatly to the value of the goodwill of the business when it comes time to sell to a third party, to bring on new partners or shareholders, or to raise capital from investors.

What is a Trade Mark?

In Australia, Trade Mark rights and protections are governed by the Trade Marks Act 1995 (Cth).

A Trade Mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from the goods or services provided by someone else.

The “mark” or “sign” can be a word, letter, name, signature, numeral, device, brand, heading, label, aspect of packaging, shape, colour, sound or scent – or any combination of those things.

For example, McDonald’s has registered Trade Marks in respect of their golden arches logo and the phrase “I’m lovin’ it”; Coca-Cola has a Trade Mark in respect of their uniquely shaped glass bottle; and Qantas has a registered Trade Mark in respect of their image of a leaping kangaroo in a triangle that is displayed on the tail of their planes.

A Trade Mark is not a business name, company name or even a domain name. Registration of a business name, company name or domain name will not create the kinds of protections that exist in relation to a registered Trade Mark.

Importantly, a registered Trade Mark is a form of property owned by the registering party and is, therefore, capable of being sold or assigned.

Why Should I Register a Trade Mark?

A Trade Mark has a significant impact on a company’s reputation and brand recognition. It is important to protect your reputation and brand – and the best way to do this is by registering the mark or marks around which you wish to build your reputation. Although you are not legally required to register your Trade Mark, it is an important step to take in protecting your intellectual property.

A Trade Mark provides the holder with exclusive rights to use, sell and licence the mark for the duration of the Trade Mark (which is 10 years initially, and can be renewed for further periods). This means that no other individuals or companies in Australia are legally able to use your Trade Mark, or a similar mark, for the same types of goods and services in respect of which it is registered.

The benefits of registering a Trade Mark are outlined in depth below.

When Should I Register a Trade Mark?

Although it is preferable to register a Trade Mark before use, it can be done at any time. In an ideal situation, this would be at the earliest possible opportunity, and ideally at the outset of starting or re-branding a business, so the business is protected before it begins building reputation and goodwill. The registration process will also identify any similar existing Trade Marks, thus registering early makes it less likely that a business will build up positive brand reputation and good will, only to find out that another company already uses the same or a similar Trade Mark and the business is faced with rebranding and a possible infringement action.

Notwithstanding this, it is a legal requirement that the Trade Mark is to be used or there is a genuine intention that it will be used. This means that you cannot register a Trade Mark just for the sake of registering it (for example, to get in before somebody else registers it) unless you genuinely intend to use it. This is to prevent people from registering an abundance of marks that will never be used, which subsequently prevents others from entering the market with similar marks.

Before registering your Trade Mark, thorough searches ought to be conducted in IP Australia’s database to ensure the proposed Trade Mark is not already registered, pending registration, or used elsewhere.

Which Trade Marks Can be Registered?

Not every “mark” or “sign” is capable of being registered as a Trade Mark.

In order for a Trade Mark to be registrable, it must be:

A mark used (or intended to be used) to distinguish your brand, goods or services from others;
Inherently capable of distinguishing the brand, good or services from others;
Not substantially identical or deceptively similar to an existing Trade Mark;
Not likely to deceive consumers or cause confusion.

The proposed Trade Mark cannot be copied from another or contain a prohibited sign, word or phrase. For Trade Marks comprised of a word or phrase, often such a mark is distinguishing because it is a word or phrase that has been made up or is entirely unique (such as “Spotify” or “Google”) – not a phrase or word that is general and generic (such as the phrase “Sydney Law”, which could be applied to many law firms in the Sydney area).

Trade Mark Classes

When registering a Trade Mark, it is necessary to consider the particular classes of goods and services for which protection is required. The Trade Mark must be registered in respect of all classes of goods or services for which it is being used. For example, McDonald’s ‘golden arches’ Trade Mark is registered to the following types of goods:

Class 29 – Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk, cheese, butter, yoghurt and other milk products; oils and fats for food.
Class 29 – French fried potatoes, malted milks and milk shakes, milk.

This means that the ‘golden arches’ cannot be used for any products or services within those classes by other companies – which, in essence, prohibits restaurants, supermarkets and the like from using a mark similar to McDonald’s ‘golden arches’.

It is very important to ensure Trade Mark classes are correct and capture all goods and services for which the mark will be used. Seeking legal advice on Trade Mark classes is a vital step in the Trade Mark process and our expert Intellectual Property lawyers will advise you about appropriate classes based upon their highly specialised knowledge in this area.

8 Benefits of Registering a Trade Mark

Registering a Trade Mark is important for protecting your business name, logo, or brand reputation for the following reasons.

Registration ensures a business can distinguish itself in the market and build a reputation.
Registration gives a business confidence to make commercial decisions and grow, with knowledge that it can legally protect its assets and products from competitors attempting to profit from a business’ reputation through using similar marks. Intellectual property is an asset and should be protected just like a tangible asset would be.
A registered Trade Mark provides exclusive rights to use the mark in Australia for ten years after its filing date (this can be renewed for further periods). This means that, for the period of registration, only the owner of the registered Trade Mark is allowed to use this Trade Mark for the relevant goods or services – no one else can use it.
A registered Trade Mark can be licenced or sold if it is no longer used or wanted, and therefore contributes to the goodwill of a business. Ensuring the business is aware of the monetisation of its assets is important in all stages of business operations.
Positive reputation and goodwill can give businesses the confidence to grow and expand into new markets.
Once registered, your Trade Mark is available on publicly searchable registers, thus increasing the likelihood that a competitor will identify it and not seek to use a similar mark when starting their business.
If another party infringes your rights, having a registered Trade Mark provides a streamlined and more effective process for enforcing your rights when compared to infringement action without a registered mark such as for misleading and deceptive conduct under The Australian Consumer Law.
If a Court finds that another party has infringed your Trade Mark, your business will be entitled to remedies including an injunction to prevent further use and damages or an account of profits.

Risks of Not Registering a Trade Mark

Although it is not a requirement to register a Trade Mark, choosing not to register it can expose you to several forms of risk, as follows.

Another party may not be aware of your mark and may use your Trade Mark thus impacting upon the reputation, goodwill and profits of your business.
Where another party is already using a mark similar to your Trade Mark, your use may infringe their Trade Mark and result in possible infringement action against your business.
Another party may decide to subsequently register the same Trade Mark to their business, making it difficult for you to continue to use your Trade Mark.

Trade Mark Infringement – What Can I Do if Someone Else is Using my Trade Mark?

Under the Trade Marks Act 1995 (Cth), a registered Trade Mark is infringed where a mark is substantially identical or deceptively similar to a registered mark, in relation to the classes of goods or services the mark is registered within. Infringement can also occur where a mark misleads or deceives consumers (under the Australian Consumer Law).

The owner of a Trade Mark can commence legal action if the Trade Mark is being infringed by another party. If it is proven the mark is being infringed, the owner is entitled to remedies such as an injunction (requiring the infringer to stop using the mark and prevent future use), damages (to compensate any loss caused by the infringement), and an account of profits (if the infringer has profited from the use of your mark).

Conclusion

If you are starting a business, have an existing business, or are considering re-branding, registering your Trade Mark/s is an important step to protect your brand and reputation, and can be critical to business success.

It is vital to have a plan in place in the event that someone infringes your Trade Mark and to ensure that the use of any Trade Mark is legal, so that any issues can be addressed without delay to minimise risk and loss to your business.

At Roberts Crosbie Mortensen Lawyers, our specialist Intellectual Property Lawyers can assist you with advising whether your Trade Mark can be registered, filing a Trade Mark application on your behalf, and providing you with expert advice on how best to protect the intellectual property assets of your business.

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The information in this article is not legal advice and is intended to provide commentary and general information only. It should not be relied upon or used as a definitive or complete statement of the relevant law. You should obtain formal legal advice specific to your particular circumstance. Liability limited by a scheme approved under Professional Standards Legislation.