Businesses use "signs" to distinguish their goods and services from those of their competitors'. A "sign" can include: a word, a letter, a phrase, a number, a sound, a scent, a colour, a brand, a heading, the shape of an object, an aspect of packaging or any combination of these.All of these sorts of "signs' can be registered as a trade mark.
Trade marks play a vital role in advertising and marketing: they indicate a distinct quality or reputation associated with goods or services. Trade marks can be valuable intangible assets — particularly given the importance of distinct and consistent marketing and brands.
When you consider a new name or brand for a product, a service, or a business, you should aim for a distinctive name or brand — preferably one that will captivate and intrigue potential consumers. However, before setting your heart on a new name or brand, you should arrange a search to ensure that the name is not the same as, or similar to, one that is already registered.
Registering a business name, a company name, or a domain name does not (in itself) grant any rights in that name. But registering a trade mark does give you certain automatic rights.
Therefore, registering your business or product's name as a trade mark is a top priority. It stops other traders from using the trade mark for the same or similar goods or services.
To apply, your application is lodged with the Trade Marks Office in IP Australia. Your application needs:
Although you can try to protect a mark that is not registered, doing so is risky and is likely to be expensive — you must prove that the mark had a "substantial reputation" in a given commercial context.
The key advantage of registration is that you get legal rights without having to rely on the mark's reputation.
Registration is not the end of it. Your registration of the mark can be lost if:
Some examples of previously registered trade marks which have lost their distinctiveness over time and become descriptive of the product itself, include "linoleum", "escalator", "aspirin", "nylon" and "gramophone". A good test can be applied to determine whether a trade mark has lost its distinctiveness: think of a sentence that uses the mark, then see if the sentence makes sense without the mark.
Although registration of a trade mark is not compulsory, it is highly advisable. This is because registration:
The main disadvantages of not registering your mark are:
|After my trade mark is registered it will remain on the Register indefinitely||A trade mark may be deregistered if: |
|I can register any trade mark||To be registrable, your trade mark must be capable of distinguishing your goods or services from those of another trader|
|My surname SMITH will be a registrable trade mark||Common surnames on their own will be very difficult to register (ie, there are many Smiths in Australia who would need to be able to use their name in connection with the goods or services they are providing)|
|The word PUMPKIN for my new soup product will be a registrable trade mark||Descriptive words and phrases on their own will be very difficult to register (it's likely that other traders would need to use the word PUMPKIN to describe their pumpkin soup)|
|The word COONAWARRA for my new wine will be a registrable trade mark||Geographical references or place names on their own will be very difficult to register (for instance, the Hunter Valley region is known for producing wines and it would be unfair to grant one producer the rights to use the word COONAWARRA)|
|Registration of a business name, company name or domain name gives me the exclusive right to use the name to protect my brand||Only registration of a trade mark can give you the exclusive right to use the mark for the classes of goods and services for which it is registered|
|Registration of a business name will provide me with immunity from infringing the rights of a registered trade mark owner who uses the same word(s)||If a business owner uses a registered trade mark on goods or services identical or similar to those covered by a trade mark registration, then the registered trade mark owner will be entitled to sue the business owner for infringing the trade mark|
|Trade mark registration will allow me to use my trade mark as a business name||Trade mark registration alone does not grant the right to use the trade mark as a business nameā?? Australian State laws cover the compulsory registration of a business name|
A registered trade mark:
Geoff Musgrove is a partner in the Maddocks Commercial team.
Geoff's principal areas of practice are:
Geoff acts for a wide range of commercial, government, accounting, manufacturing, professional and rural industry clients.
The legal information and commentary on this site is general only. Documents ordered through Cleardocs affect the user's legal rights and liabilities. To assess their suitability for the user, legal accounting and financial advice must be obtained.
For more information, contact Maddocks on (03) 9258 3555 and ask to speak to a member of their team.