What is a trade mark?
A trade mark (commonly referred to as a ‘trademark’) can be one, or a combination of, the following:
- a business name
- a product name
- a sub-brand
- a distinctive catch phrase
- a logo, picture or symbol
- a colour, word, letter, number or sound
- a distinctive product shape
- an aspect of packaging
- a scent
Trade marks are used by businesses to distinguish their goods and services from those of competitors. Some well-known trade marks are Nike’s Swoosh and McDonald’s golden arches.
A registered trade mark provides you with exclusive and automatic rights to your brand, Australia-wide.
What can be trade marked?
A trade mark must meet the requirements of the Trade Marks Act 1995. The main points of the Act are that your trade mark needs to be:
- not similar to any prior filed trade mark applications or registrations: the mark must not be substantially identical or deceptively similar to any other registered trade mark (there are some exceptions to this); and
- not descriptive in relation to the business activities to be covered by your application: something that other traders don't need to use in the normal course of their trade (e.g. geographical names, common surnames and trade expressions)
The Trade Marks Office of IP Australia is responsible for reviewing all Australian trade mark applications.
Why should I register a trade mark?
Trade mark registration is the most effective way to protect your business' brands and marketplace reputation. Misuse of the same or similar brand names could see your company’s reputation damaged, or your competitors benefit from the goodwill you established with customers under your own trade mark.
While trade mark registration is not compulsory, it is recommended. It prevents other traders who offer similar products and services from adopting an identical or similar brand name anywhere in Australia.
If you do not register your trade mark and a competitor uses a similar or identical mark, you will have to demonstrate the level of your reputation in your brand in order to protect your rights. This can be a difficult and expensive to establish in court. Even then, your reputation may be limited to the geographical area where you trade and may not protect you against infringement elsewhere. Registering your trade mark gives you automatic protection Australia-wide, without the need to establish reputation in the event of infringement.
Trade Mark Infringements
Trade mark registration allows you to take action against unauthorised use of your brand under the Trade Marks Act 1995. There may also be potential breaches of the Australian Consumer Law (formerly the Trade Practices Act) and the common law under ‘passing off’. Our trade mark lawyers can provide you with advice on trade mark infringement and more.
Why do I need a trade mark if my business name is registered?
If you intend to trade under a name other than your own personal name, state legislation requires that you register the business name. However, registration of a business, company or domain name does not give you any proprietary rights - only trade marking your business name can provide that.
It is even possible to register a business name and still be infringing another trader’s rights by virtue of a prior trade mark registration. For this reason it is prudent to conduct a trade mark search before you register your business name.
Trade mark registration avoids such limitations. Managing your trade marks well from the outset will provide your business with a strong foundation on which to build its reputation and market share into the future.
How can Actuate IP assist?
Actuate IP’s qualified trade mark attorneys and trade mark lawyers provide an expert, tailored approach to all aspects of your trade mark strategy at a fixed price to suit your budget and needs.