Protect your mark
A trade mark is a sign that is used, or intended to be used, by an agency to distinguish its goods and services provided in the course of trade from the goods and services provided by other organisations.
A trade mark may consist of words, letters, numbers, shapes, symbols, logos or a combination of those items. A trade mark may be protected in several ways, including under the common law and by registration. Registration of a trade mark initially provides protection for ten years and the registration may be continually renewed in ten-year periods indefinitely.
Is a registered trade mark necessary?
An unregistered trade mark may be protected under the common law through the tort of passing off or under consumer protection legislation. In some circumstances, an unregistered trade mark may also be protected under the Copyright Act 1968 (Cth). Whether or not an agency should seek registration of a trade mark under the Trade Marks Act 1995 (Cth) is dependent upon a number of factors, including the following:
- the costs, including both the official fees and legal fees, versus the potential benefit of holding a registered trade mark
- the likelihood that the agency will actively monitor for potential infringement and would take enforcement action in the event that a third party used a similar trade mark in relation to similar goods and services
- the intended length of use of the trade mark, particularly whether the mark will simply be used to promote a one-off event in the near future or whether the mark will be continuously used for many months or years
- whether the trade mark will actually be used as a trade mark, that is, in the course of trade to differentiate the agency’s goods and services
- whether the trade mark will actually be used as opposed to being registered simply to prevent others from using the mark or to try to claim a monopoly over the use of the mark.
Agencies should note that the registration of a company name, business name or domain name does not create any exclusive rights to use that name as a trade mark. It simply prevents others from registering an identical company, business or domain name.
What are the benefits of registering a trade mark?
A registered trade mark provides an agency with a number of benefits, including the following:
- the exclusive right to use the trade mark in Australia and potentially internationally
- a clear legislative framework for enforcing the trade mark which removes the need for the agency to prove an established reputation at common law
- enforcement options which are ordinarily easier and less costly than enforcing an unregistered trade mark
- an easy method of demonstrating ownership of the trade mark which is particularly useful for online infringements as the agency can more easily report and prove an infringement to the website operator
- notifies third parties of the agency’s legal claim to the trade mark and its intention to protect that mark, particularly if the agency utilises the ® symbol
- the trade mark application process can help to determine whether where are any similar registered trade marks which the agency would potentially infringe if it proceeded to use its mark
- protects the commercial value in the trade mark and more easily enables the trade mark to be licensed or assigned.
What can’t be registered as a trade mark?
A trade mark will not be capable of being registered as a trade mark under the Trade Marks Act 1995 (Cth) in a number of circumstances, including the following:
- the trade mark is substantially identical or deceptively similar to a pre-existing registered trade mark in the same or similar classes of goods and services
- the trade mark is insufficiently distinctive and is therefore incapable of distinguishing the goods and services of the agency from those of another organisation
- the trade mark is a descriptive term which other organisations should be permitted to use to describe their goods and services
- the trade mark is prohibited from being registered as a trade mark, for example, ‘Olympic Champion’ or ‘Returned Soldier’.
IP Australia, the body responsible for examining trade mark applications, offers a ‘Trade Mark Headstart’ process which provides an initial assessment of the registrability of a trade mark. Although the TM Headstart process costs marginally more than a standard trade mark application, the initial assessment is provided within five business days of the date of filing whereas a standard trade mark application may not be assessed for up to four months from the date of filing. If the initial assessment is positive, then the TM Headstart application can be easily converted to a standard trade mark application.
What to do before applying to register a trade mark?
Before applying to register a trade mark, there are a number of activities which an agency should undertake, including the following:
- confirm whether the trade mark complies with the Queensland Government corporate identity system
- confirm that the agency owns the intellectual property rights in the trade mark, for example, if a logo was designed by a third party, do the terms of engagement provide that the agency or the third party owns the logo
- consider the classes of goods and services in respect of which the trade mark will be used, both now and in the future
- review IP Australia’s trade marks database (ATMOSS) to identify any similar existing registered trade marks
- undertake a review to determine whether use of the trade mark would potentially infringe the proprietary rights of the owner of an unregistered trade mark, either by engaging a third party search company to conduct a search or by undertaking a detailed internet search using search engines, reverse image searches, White Pages and Yellow Pages.
What this means for your agency
An application for a simple trade mark can be made relatively quickly. However, the trade mark registration process ordinarily takes at least seven and a half months from the date of filing the application which causes a period of uncertainty. If successful, the registration retrospectively applies from the date of filing the application.
During the period of uncertainty, the trade mark may be rejected due to conflict with an existing pre-registered trade mark, indistinctiveness or administrative issues. A third party could also potentially oppose the registration of the trade mark.
A trusted legal practitioner can guide agencies through the TM Headstart and standard application processes and potentially reduce costs by preventing agencies from submitting applications which contain errors, do not provide the required scope of protection or which are unlikely to be successful.
The information in this publication is provided for general purposes only. It is not to be relied on as a substitute for legal advice. Crown Law and the Department of Justice and Attorney-General accept no liability for losses caused by reliance on the material in this publication. Formal legal advice should be obtained for particular matters.
Published: 11 July 2016
Author: Adam Hall