What is a trade mark?

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 goods or services so dealt with or provided by any other person (s.17 of the Trade Marks Act 1995 (Cth) (TMA)). Practically, it can include letters, words, signatures, numerals, devices, brands, headings, labels, tickets, aspects of packaging, shape, colour, sound or scent and any combination of these.  Examples of trade marks are the golden arcs of McDonald’s, Woolworths and Gucci. A trade mark can consist of words or images alone or any combination of the items listed in the definition of signs in section 6 of the TMA.

What can you not register as a trade mark?

Generally, you are not able to register a trade mark if the following applies:
  1. inherently adapted to distinguish the designated goods or services from the goods or services of other persons;
  2. can’t register descriptive or geographic terms;
  3. can’t be a prohibited sign;
  4. must be able to be represented graphically;
  5. must not be scandalous or contrary to law;
  6. must not have deceptive or confusing connotations;
  7. the applicant must have an intention to use the trade mark (if an applicant does not intend to use the trade mark, you might not  be able to register it); 
  8. must not be in bad faith;
  9. must not conflict with earlier trade mark application (registered or unregistered) with a reputation or be substantially identical or deceptively similar for similar goods and closely related services of another trade mark;

When is a trade mark infringed?

Section 120 of the TMA gives a good idea as to how a trade mark is infringed. These are:
  1. the alleged infringer must use the trade mark as a Trade Mark; 
  2. the infringing “sign” must be substantially identical or deceptively similar to the trade mark being infringed upon; 
  3. the use of the trade mark must be in relation to the same or closely related class of goods or services (except for well-known trade marks) 

How to check trade marks in Australia

To check if there are existing trade marks similar to yours, you can use IP Australia’s Trade Mark Search system. You can also seek further assistance from an IP lawyer such as TNS Lawyers. We recommend that you always conduct a thorough search before applying for a trade mark. We usually advise clients to go through a headstart application through to lodgment too. This way you will have a full appreciation of any conflict trade marks and what needs to be amended before going through the application process. By being proactive, you can avoid future legal troubles resulting from infringement of another company’s trade mark.

Why register a trade mark?

There are many reasons as to why you want to register a trade mark, a few benefits include:
  1. By registering a trade mark, it gives you exclusive rights to use the Trade Mark to use, license and sell your Trade Mark;
    • Your trade mark becomes your brand– you can licence it to third parties to use your Trade Mark which in turn may promote your business; 
    • You can sell your trade mark for profit; 
    • It prevents other third parties infringing on your trade mark. Using another person’s trade mark (whether registered or not) may be an infringement of the Trade Mark known as “passing off”; 
  2. Registration means that the trade mark can be marked ® (R in a circle) denoting that it is registered
  3. Marketing your business. By having a sign or logo, your business can be differentiated from the other competing businesses.

How long do trade marks last in Australia?

Once registered, a trade mark is protected in Australia for a period of 10 years. It can then be renewed every ten years (subject to fees). You can renew your trade mark registration 12 months before the renewal date or up to 6 months after.

How much does it cost to trade mark a name in Australia?

As the matter of trade mark registrations is complex, the costs involved can vary greatly. Some factors to consider include:
  1. the type of trade mark you’re applying for
  2. the classes of goods and/or services relevant to your trade mark and the amount of classes you are applying for
  3. filing application fees and other government charges (depending on the jurisidiction you’re filing the application in) 
It’s recommended to seek an IP lawyer’s help to ensure the best protection of your trade mark, whether for searches, registrations, making technical edits, appealing a refusal or responding to an objection.  Call us on +61 3 9052 3214 for further details.

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