What is a trademark

Trademarks are used to distinguish the goods or services of a trader from those of others traders and must be registered to provide rights under the Trade Marks Act 1995 (Cwlth). The owner of a registered trademark has the exclusive right to use the trademark for the goods and services for which it is registered.

A registered trademark can protect words, symbols, letters, numbers, names, signatures, phrases, sounds, smells, shapes and aspects of packaging, or a combination of these items. If your trademark is made up of a combination of items, your trademark registration will only protect the trademark as a whole. It will not provide protection against another party using one item without the others.

Registration of a business name does not create any enforceable rights in the name, nor does it entitle the business owner to use the name as a trademark without the risk of infringing the rights of others.

Trademarks are valuable assets as they may be registered for an unlimited number of 10 year terms, provided the renewal fees are paid. However, like most registered IP rights, a registered trademark can be revoked. For example, if you do not continue to use your trademark, and have not used it for a period of 3 years, a competitor can apply to have your mark removed from the register.

Benefits of registering a trademark

Trademark registration provides you with certainty and a clear statutory framework for enforcement. You are not required to prove that the trademark has an established reputation.

An Australian trademark registration covers the whole of Australia. Trademarks can also be registered in other countries on a country by country basis. Initial registration lasts for 10 years, and can be extended at 10-year intervals.

A registered trademark can assist in preserving a business's advantage and developing strong brand loyalty. It prevents others from registering similar trademarks in the categories in which you operate.

Once you own a trademark, you have the right to sell or license it to others, which you cannot do with an unregistered trademark.

Trademarks can be used to supplement the protection provided by other types of IP with shorter terms. If a patented product, a registered design or a new plant variety is commercially successful, the value of the trademark used in marketing the product may outlast other IP rights – when the other IP rights expire, anyone can exploit the IP but consumers may still prefer to buy products with the original brand.

Registration of a trademark is not essential. In some cases it is possible to protect unregistered trademarks by relying on common law rights, such as 'passing off', and protection against misrepresentation under Australian legislation.

Trademark notification

Once a trademark has been registered you should use the symbol '®' to notify others that it is a registered mark, or 'TM' or 'TM application pending' for applications that are still to be examined, as appropriate.

Applying for a trademark

There are 3 things to consider when deciding whether to apply for a trademark:

• Is there a valid and defensible reason to use and register this trademark?
• Does this mark infringe any other trademark currently registered or in use within Australia?
• Is the trademark capable of achieving registration?

A trademark application can take over 20 months after filing to be fully registered with IP Australia. The process can be shorter for straightforward applications. However, the process can be longer where issues arise with registration eligibility or where a third party opposes registration.

It is not necessary to wait for registration of a trademark before using it. However, the success of your application is not guaranteed and until the trademark is actually registered, it cannot be enforced as a registered trademark.

Also consider...

• Visit IP Australia for information on trademarks. Topics include: about trademarks; the application process; search for a trademark; request a TM Headstart; apply for a trademark; renew your trademark; pay your trademark registration fee; payments for existing TM Headstart applications; and opposition to registration.
• Visit the Institute of Patent and Trade Mark Attorneys of Australia – a representative body for Australian patent and trademark attorneys. This site provides the latest news and resource information about patent and trademark law in Australia.