What is a trade mark
Trade marks 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 trade mark has the exclusive right to use the trade mark for the goods and services for which it is registered.
A registered trade mark can protect words, symbols, letters, numbers, names, signatures, phrases, sounds, smells, shapes and aspects of packaging, or a combination of these items. If your trade mark is made up of a combination of items, your trade mark registration will only protect the trade mark 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 trade mark without the risk of infringing the rights of others.
Trade marks 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 trade mark can be revoked. For example, if you do not continue to use your trade mark, 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 trade mark
Trade mark registration provides you with certainty and a clear statutory framework for enforcement. You are not required to prove that the trade mark has an established reputation.
An Australian trade mark registration covers the whole of Australia. Trade marks 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 trade mark can assist in preserving a business's advantage and developing strong brand loyalty. It prevents others from registering similar trade marks in the categories in which you operate.
Once you own a trade mark, you have the right to sell or license it to others, which you cannot do with an unregistered trade mark.
Trade marks 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 trade mark 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 trade mark is not essential. In some cases it is possible to protect unregistered trade marks by relying on common law rights, such as 'passing off', and protection against misrepresentation under Australian legislation.
Trade mark notification
Once a trade mark 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 trade mark
There are 3 things to consider when deciding whether to apply for a trade mark:
- Is there a valid and defensible reason to use and register this trade mark?
- Does this mark infringe any other trade mark currently registered or in use within Australia?
- Is the trade mark capable of achieving registration?
A trade mark 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 trade mark before using it. However, the success of your application is not guaranteed and until the trade mark is actually registered, it cannot be enforced as a registered trade mark.
Also consider...
- Visit IP Australia for information on trade marks. Topics include: about trade marks; the application process; search for a trade mark; request a TM Headstart; apply for a trade mark; renew your trade mark; pay your trade mark 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 trade mark attorneys. This site provides the latest news and resource information about patent and trade mark law in Australia.