PROTECT YOUR TRADE MARK TO PREVENT OTHERS FROM COPYING YOUR TRADE MARK AND TAKING ADVANTAGE OF YOUR REPUTATION AND GOODWILL.
WHAT IS A TRADE MARK?
What is a trade mark?
A trade mark is used to distinguish your product (your goods and/or services) from those of other traders. Typically, a trade mark includes a word, phrase, logo or a combination of these.
An example of a well-known trade mark is QANTAS and the flying kangaroo logo.
A trade mark is a valuable marketing tool. As your business grows, the public identifies the trade mark with the quality and reputation of your product. This reputation and goodwill is something you build over time.
It is therefore highly recommended that you register and protect your trade mark to prevent others from using your trade mark and possibly gaining advantage from your reputation and goodwill.
WHAT IS A TRADE MARK REGISTRATION?
A trade mark registration is a trade mark which is registered with the Australian trade marks office for specific goods and/or services.
Trade mark registrations are always in two parts being:
(1) the sign or trade mark – a word, phrase, logo or a combination of these; and
(2) the goods and/or services the sign is used or registered for.
Examples: TOYOTA for cars, APPLE for computers
The underlying principle behind trade mark registrations is to distinguish the product (goods or services) of one company over another. In other words, when the public sees a trademark, they know the product comes from a particular company, with all the associated reputation and goodwill associated with that company.
SHOULD I REGISTER MY TRADE MARK? WHAT ARE THE BENEFITS?
Yes, there are many benefits to registering your trade mark, including:
- Exclusive right to use your registered trade mark for the goods or services specified in the registration – Your trade mark registration covers identical trade marks as well as trade marks that are similar substantially identical, or deceptively similar to your registered trade mark. This includes similar word spellings or misspellings, similar pronunciations and perhaps even similar connotations – a similar idea or image. Your trade mark registration also covers the goods and/or services you specified in the registration as well as closely related goods or services, and goods or services of the same description. For example, a registration for KARBON for jackets will cover another person using or trying to register CARBON APPAREL for shirts.
- Exclusive right to authorise other people to use your registered trade mark for the goods or services specified in the registration – The trade mark is intellectual property (IP) and you can license its use to others for a fee.
- Personal property which can be transferred or sold – your IP has a value and can be transferred to family or sold to others, particularly if the trade mark is associated with a good reputation and goodwill with consumers. A trade mark can be of significant value as it is infinitely renewable unlike patents or registered designs for example which have a set maximum term.
- A registration that covers the whole of Australia – your registration covers other states and capital cities even if you do not or have not traded in those areas and do not have any reputation in those areas.
- Assurance that no one will ‘steal’ your trade mark – a trade mark registration provides a quick assurance that you can continue using your trade mark which is often connected to your business name. If you have not registered your trade mark and someone else files an application to register a trade mark identical or similar to yours, it can be quite complicated and costly to show your ownership of the trade mark from prior use. If you do not have sufficient evidence of use of your trade mark, it may be necessary to adopt a different trade mark.
- Can give the Australian Customs Service a notice objecting to the importation of goods that will infringe your registered trade mark – this benefit has been strengthened in the recent legislation changes. This allows you to request Customs to stop counterfeit goods which may damage your market and reputation.
- Will be in a stronger position to stop others from using your trade mark for the same or similar goods or services of your trade mark registration – a trade mark registration is immediately enforceable and far easier to enforce when compared to an unregistered trade mark. There is protection against misrepresentation under trade practices or fair trading legislation which one can use for an unregistered trade mark. However, these will be far more expensive and time consuming as you may have to take court action under common law, prove that you have a reputation in your business and that damage is being caused by the other party. In contrast, proving infringement of a trade mark registration only requires showing that the trade marks are the same or similar and that they are being used for the same or similar goods and services.
Having a trade mark registration is a relatively inexpensive way to achieve the above benefits as well as avoiding issues down the track in protecting your brand, trade mark and business reputation.
DO I HAVE TO REGISTER MY TRADE MARK?
Technically, no. Trade marks that are not registered may be protected under common law. However, enforcing these rights require using the provisions of the Competition and Consumer Act 2010 and state based fair trading legislation, which will be far more difficult and expensive. Further, your rights may be limited to a particular geographical area which means another trader in a different area may be allowed to use your trade mark or a similar trade mark in that area. This would dilute the distinctiveness and value of your trade mark.
I ALREADY HAVE A BUSINESS NAME REGISTRATION, A COMPANY NAME REGISTRATION
AND A DOMAIN NAME REGISTRATION – DO I STILL HAVE TO REGISTER MY TRADE MARK?
Yes. Registering a business, company or domain name does not give you any rights which you can immediately enforce. It is a very common misconception that these other registrations provide rights which can be enforced. These registrations serve a different purpose.
A business name registration identifies the owners of the business. A company name registration is required by the Australian Securities and Investments Commission (ASIC). A domain name corresponds to the unique identifying number – an Internet Protocol address of a computer connected to the internet. For example, IP Australia’s Internet Protocol address is 188.8.131.52 but as this is hard to remember, most people access the website using the domain name – www.ipaustralia.gov.au.
Only a trade mark registration can provide protection that is immediately enforceable.
What about rights from using the business name, company name or domain name? It is true you build up rights via use of these over time under common law. In fact, we typically use evidence of use of these names to show your ownership of the trade mark during registrability and opposition matters. However, enforcing such common law rights are far more expensive when compared to having a trade mark registration.
If you register a business, company or domain name, you do not automatically have the right to use that as a trade mark. The same word(s) may be registered by different people as a business name in other states and territories. We can perform a search of the trade marks register for you to make sure there are no registered trade marks you may infringe if you start using your trade mark.
CAN I ENFORCE MY TRADE MARK REGISTRATION AGAINST ANOTHER PARTY WHO REGISTERED A BUSINESS NAME, COMPANY NAME OR DOMAIN NAME SIMILAR TO MY REGISTERED TRADE MARK?
Only of they start using it as an actual trade mark. If you have a registered trade mark, you can enforce your trade mark registration if another business uses your trade mark or a similar trade mark for goods or services similar to those covered by your trade mark registration.
In other words, there is no stopping another party from registering a business name, company name or domain name similar to your registered trade mark. The registration systems for these serve a different purpose and they do not search the trade marks register for potential conflicts. However, if the other party starts using a similar trade mark to your trade mark registration, then you may enforce your trade mark registration.
Put in another way, another party can register a business name, company name or domain name similar to your registered trade mark, but they have to use a different trade mark which will not infringe your trade mark registration.
HOW DO I CHOOSE A TRADE MARK?
The trademark should be distinctive considering the product (goods and services) it is to be used for. The trade mark must satisfy two types of distinctiveness – absolute and relative distinctiveness.
Absolute distinctiveness means the trade mark by itself should be distinctive of the product.
Relative distinctiveness means the trade mark must be distinctive compared to other trade mark registrations for the same or similar products.
When considering absolute distinctiveness, there are generally four levels:
Arbitrary of Fanciful: the trade mark has no relationship to the product or service. For example, LEXUS, KODAK, REPCO and APPLE have no direct relationship to their products. APPLE for computers is acceptable. However, APPLE for a fruit business would not be acceptable as other fruit traders would ordinarily need to use the word “Apple”. Some of these trademarks also have no meaning by themselves or no usual relationship to the product or services. These are the most distinctive and recommended trademarks and in most cases are the easiest to register.
Suggestive Trademarks: indirectly describe a characteristic of the product or service. For example, JAGUAR and MUSTANG suggests fast cars, but does not directly describe the product. These trademarks may be objected to but should be registrable and will also provide a high degree of protection.
Descriptive Trademarks: directly describe a characteristic or quality of the product or service. For example, PARK N FLY for airport parking services. These trademarks are usually difficult to register and only become registrable after years of use and actual customer recognition.
Generic Trademarks: the weakest trademarks and will often fail to be registered. For example, MOO COW for dairy products.
When you have decided on a trade mark you wish to use, call us first as we can provide advice as to whether you can use your proposed trade mark or whether it may cause you problems down the track.
SEARCHING THE TRADE MARKS REGISTER
e can perform a search of registered trade marks to assess (1) the relative distinctiveness of your trade mark (to see whether your trade mark is distinctive compared to other trade marks) and (2) whether your use of your trade mark may infringe someone else’s trade mark registration. It is important to note that these two issues are always assessed independently of each other.
Can I do the trade mark search myself? You can. The trade mark office searching service is ATMOSS ( http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start). However, you need to know how to use the service and how to interpret the results based on trade marks law and decided cases. For example, you need to search for misspellings, different spellings and same pronunciations. When you get the results, you need to assess whether each result is relevant to your trade mark or not. For example, the fact a possible relevant trade mark is registered in a different class of goods does not mean it is not relevant. Other factors must also be considered such as the likelihood of confusion, are the goods sold through the same channels, etc.
By all means, use the ATMOSS service to perform initial searches yourself. Once you decide on a trade mark, give us a call so that we can perform a thorough search and confirm the availability of your mark.
We can also perform a broader search which includes other databases to identify any relevant unregistered trade marks which may be in use.
Whilst no trade mark search can fully guarantee that your trade mark is registrable or that your trade mark will not infringe someone else’s trade mark registration, a professional search conducted will reduce the risk considerably.
Only the distinctive portion is considered – It is also important to note that only the distinctive portion of the trade mark will be assessed when determining registrability and possible infringement. Words common in the trade with will not be given any weight. For example, in the trade mark GENESIS REAL ESTATE CONSULTING ADVISORY SERVICES, only the word GENESIS will provide possible distinctiveness and will be the only part that will be assessed. The other words REAL ESTATE CONSULTING ADVISORY SERVICES will be considered common to this industry which other traders can legitimately use and thus provide no distinctiveness.
This does not mean that the above trade mark cannot be registered as a whole. The trade mark can be registered if GENESIS is distinctive in this field.
GOODS & SERVICES SPECIFIED IN A TRADE MARK APPLICATION
Goods and services for a trade mark application are divided into different classes. There are presently 34 classes of goods and 11 classes of services. For example, cars are in a different class to cakes. The classes (unfortunately) are related to the official fees you pay, there are official fees for each class you have in your trade mark application at filing and at registration. Most trade mark applications however relate to a single class only and thus we can minimise fees.
Once you advise us of the trade mark you would like to register and the goods or services you want to use the trade mark for, we will be in a position to identify the most appropriate class or classes your trade mark will fall into. We can additionally broaden your trade mark application by adding other goods or services within the same class ‘for free’ which you may use your trade mark for in the future.
HOW DO I FILE A TRADE MARK APPLICATION?
Give us a call or send us an email to firstname.lastname@example.org and tell/send us the following:
1. The trade mark you want to use (word, phase, logo, or a combination)
2. The product (goods and/or services) you want to use the trade mark for.
We will then assess your trade mark to determine its chances for registrability and appropriateness in distinguishing your product from other traders.
CAN I FILE A TRADE MARK APPLICATION MYSELF?
Technically, yes. You can do so via the Australian trade marks office website. Also, there are other websites which provide an online assisted filing service for a fee.
Like with most things however, you need to know what you are doing and the possible pitfalls and mistakes you can make by doing it yourself. These include:
- Is the trade mark you will be filing distinctive of your product and in your field?
- Is the trade mark you will be filing unnecessarily too narrow? Are there ways you can broaden the scope of the trade mark you are filing? Are you filing in the correct class or classes?
- Are the goods and services you specify sufficient to cover your product as well as your possible future products?
- Will use of the trade mark you are applying for infringe someone else’s trade mark registration?
- If using an online filing service identifies possible blocks to registration – do you know how to overcome such issues or how to get around them?
TM Headstart – The Australian trade marks office has an application filing service called TM Headstart which provides a quick assessment and turnaround of within 5 days where they will advise you if your trade mark should be acceptable or if it may encounter difficulties. However, this service will not provide advice as to the items mentioned above even if the trade mark is registrable. If there are possible blocks to registration of your trade mark, this service will also not provide advice as to how to overcome such issues or get around them.
Can I file the application myself and get a professional to modify my trademark or goods and services after filing to address the objections? Can I modify my trademark or goods and services after filing?
No. Once a trademark application is filed, only very minor changes are allowed to the trade mark. The goods and services can only be amended by the removal of goods and services – no additions can be made. Thus, it is important that a trade mark application be filed properly from the outset.
WHY FILE A TRADE MARK APPLICATION WITH US? WHY CHOOSE US?
- Expert Professional Advice – as we are registered trade mark attorneys with 15+ years of experience, we can provide professional advice not only for broadening your trade mark registration as much as possible but also minimising the possible blocks to registration. This leads to lowering your costs overall as you will likely spend less on prosecution of your application. In fact, most of the cases we handle proceed directly to acceptance. This may also lower your costs in pursuing overseas trade mark registrations.
- Personal service – in contrast to an online filing service, you can talk to us on the phone at anytime about your application. Many clients call us for just one or two questions that come to mind. These services are never charged to you. If a question requires a more substantive analysis and search, we will advise you of the cost for providing such service and obtain your cost approval before proceeding. If we are not available to take your call, please leave us a message or send us an email. We aim to provide same day service and will return your call as soon as we can. Otherwise, we aim to answer within 24 hours.
- Lower fixed costs – our costs for each step are fixed, and the costs from start to finish will be outlined to you. Our costs are lower than those of the bigger firms, and they are comparable to those charged by online filing services.
- Streamlining your application – our aim for your application is to broaden its scope as well as minimising any possible blocks to registration. We aim for the process to be as clear and straightforward as possible for you
WHEN DO I NEED TO FILE A TRADE MARK APPLICATION?
As soon as possible. Trade mark registrations are awarded on a first-come first-served basis. For the benefits provided above, and for avoiding possible future problems with registration or other traders, you should file a trade mark application as soon as possible.
In many cases, delaying the filing of an application will cost you more money down the track. Many clients have received inaccurate advice in the past that they do not have to apply for registration of their trade mark. In such cases, the clients have had to spend more money defending their positions or adapt a different trade mark which meant costs in preparing new domain names, signs, letterheads, invoices, etc.
IS THE TRADE MARK APPLICATION INTERNATIONAL? HOW DO I OBTAIN A TRADE MARK REGISTRATION OVERSEAS?
An Australian trade mark registration is effective in Australia only.
Corresponding national applications can be applied in overseas countries. If these applications are filed within 6 months of the Australian application, the overseas applications will get dated back to the Australian application filing date.
Trade mark registrations for the most part are on a country basis (technically). There are two notable exceptions.
1. European Community Trade Mark (CTM) registration
2. International trade mark registration (Madrid Protocol)
European Community Trade Mark (CTM) registration
The Community Trade Mark (CTM) system allows filing of a single application which covers the European Union (EU). If successful, this one application results in a CTM registration that is recognized in all countries of the EU.
Note however that the trademark in the CTM application must be registrable in all EU Member States – if a ground for rejection applies in just one of the EU Member States, the mark cannot be registered as a CTM. Conversion to individual national applications will then be required.
International trade mark registration (Madrid Protocol)
A Madrid Protocol application must be based on a trade mark application or registration in Australia (the “home” application or registration). The international trade mark registration designates the countries applied for and the relevant application and country fees are paid.
The international trade mark registration (IR) is like a “bundle” of national registrations. The trade mark is examined in each country designated and, if it is not rejected in a country, that country becomes part of the IR. Even if the IR application is refused in some countries, the application can proceed to registration in the remaining designated countries.
Benefits: An IR has many benefits including:
- A single international application in English to cover the designated countries. This can be simpler and less expensive than applying directly to each country.
- Single request for changes or renewing the international registration.
- Same protection as a national registration in the countries.
- Ability to make subsequent designations in other Madrid Protocol countries at a later date as you expand your business.
- Initial registration period of 10 years. The IR can be renewed every 10 years upon payment of the relevant fee.
Which countries are covered by the Madrid Protocol?
Not all of the major trading countries of the world are part of the Madrid Protocol. The following are the most commercially relevant to Australian trade mark applicants:
China, European Union (CTM), France, Germany, Italy, Japan, Mexico, New Zealand. Republic of Korea, Russian Federation, Singapore, Spain, Switzerland, United Kingdom, United States of America
OTHER TRADE MARK SERVICES
Trade Mark Infringement
Enforcing a trade mark registration – if you think someone is infringing your trade mark registration, give us a call. We will assess the issue and can assist you in enforcing your registration. We recommend you do not approach the other party directly. An unjustified threat of infringement is an offence and we need to establish first that the other party is in fact infringing.
Defending you from a trade mark infringement allegation – if you receive a letter advising you that you are infringing a registered trade mark, do not panic. Give us a call to discuss the issue. We have defended many clients in similar situations in the past. In most cases, we can refute or challenge the allegations and politely but sternly tell the other party to withdraw their threats.
Trade Mark Opposition
Opposing a trade mark application – if you are aware of a trade mark application, which if registered may affect your trade mark or business, give us a call to discuss opposing the trade mark application. There is a deadline for filing the trade mark opposition and as such, you should contact us as soon as possible.
Defending your trade mark application from an opposition – if your trade mark application is opposed, give us a call. We have successfully defended clients in opposition matters even against larger foreign corporations.
Purchasing a trade mark
If you are considering purchasing a trade mark, give us a call to discuss performing a due diligence check on the trade mark. This involves investigating various issues to make sure that you are purchasing a legitimate investment.
In a recent case we handled, the client was prepared to pay another party a substantial amount for a trade mark. The client was not aware that they had rights in the trade mark in Australia. We were able to obtain the trade marks for our clients at about 10% of the cost they were prepared to pay the other party.
My accountant/lawyer/business consultant told me I do not have to apply for registration of my trade mark.
Unfortunately, this is inaccurate advice commonly received by many clients. This situation does not become a problem or issue until some other trader adopts their trade mark or tries to register the trade mark. In such cases, the clients have had to spend more money defending their positions or they have had to adapt a different trade mark which meant costs in preparing new domain names, signs, letterheads, invoices, etc.
When can I use the ® symbol and when can I use the TM symbol?
You can use the TM symbol once you start using your trade mark, particularly after you file a trade mark application. Once your trade mark is registered, use the ® symbol adjacent your trade mark to let others know that your trade mark is registered and you intend to protect your valuable intellectual property.
You must not use the ® symbol if your trade mark is not registered. To do so is an offence.
How long does it take to get a granted trade mark?
The quickest is about 8 months. The reason for this is there is a period of 6 months at least from the application filing date where the Australian trade mark office must satisfy international obligations.
How long does a trade mark last? A trade mark can have an infinite life. The initial trade mark registration is for 10 years, and you can repeatedly renew the registration for a further 10 year period by paying a renewal fee.
Do I have to actively use the trade mark?
If after 5 years from your initial application filing date, you have not used your trade mark for a continuous 3 year period, another party can apply to have your trade mark registration removed on the grounds of non-use.
How do I defend myself from a trade mark infringement allegation?
If you receive a letter advising you that you are infringing a registered trade mark, do not panic. Give us a call to discuss the issue. We have defended many clients in similar situations in the past. In most cases, we can refute or challenge the allegations and politely but sternly tell the other party to withdraw their threats.
My trade mark application has received an opposition? What do I do?
If your trade mark application is opposed, give us a call. We have successfully defended clients in opposition matters even against larger foreign corporations.
The information provided in this website is for general information purpose only and is not intended as legal advice. Your specific circumstances will determine whether the information provided applies to you. Please contact us for any questions or clarifications.