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.