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Protecting the commercial value of your businesses' name, sound, smell, etc. Trade marks: Greater protection than a business, company, or domain name

Trade marks are an important way for businesses to build goodwill and to develop valuable intellectual property. Registering a trade mark is the best way to protect that property's. longevity and value. Craig Ng and Jaime Riffel

The purpose and value of your trade marks: signs, sounds, smell etc.

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.

Choosing a name? ... search first

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.

The greatest protection of all

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.

Applying to register: from "TM" to "Ā®"

To apply, your application is lodged with the Trade Marks Office in IP Australia. Your application needs:

  • to include a "representation" (a copy) of the trade mark; and
  • to specify the goods and services for which you want the mark registered.

Any protection without registration?

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.

Rights to a registered trade mark can be lost

Registration is not the end of it. Your registration of the mark can be lost if:

  • it is not used in good faith for a continuous period of 3 years, or
  • it becomes descriptive or generic (hence the need to choose something distinctive), or
  • the renewal fees are not paid every 10 years, or
  • registration is cancelled.

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.

The commercial benefits of a registered trade mark

Although registration of a trade mark is not compulsory, it is highly advisable. This is because registration:

  • grants the owner a monopoly of rights to exclusively use, license or sell the trade mark within Australia for the relevant goods and services.
  • can stop other traders from, and deter new business competitors from, using the same or a similar trade mark in relation to the relevant goods and services for which it is registered.
  • of a trade mark can create a key marketing tool, as the public will identify a distinct quality and image with the relevant goods and services.
  • helps to protect the reputation and goodwill the business has developed.
  • as an intangible commercial asset, a registered trade mark can provide companies with financial leverage.
  • provides a cheap and expeditious way of enforcing protection against acts of infringement by other traders.
  • can last indefinitely (as long as it continues to be used, and is renewed every 10 years).
  • confers legal rights on the owner with respect to the use of the trade mark — on the other hand, mere registration of a business name, company name or domain name does not, in itself, confer legal rights.

The disadvantages of not registering

The main disadvantages of not registering your mark are:

  • that your competitors may register the same, or a similar, trade mark; and
  • that if another person uses your mark, then you may have to sue (for example, for "passing off" or under the Trade Practices Act 1974): this is a decidedly more complex and expensive task than suing for infringement of a registered trade mark.

Your trade marks ready reckoner

After my trade mark is registered it will remain on the Register indefinitely A trade mark may be deregistered if:
  • the mark becomes too descriptive or generic;
  • someone applies to have it removed because it is not being used;
  • the registration renewal fees are not paid, or registration is cancelled.
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

The final word on trade marks

A registered trade mark:

  1. Must have satisfied the main criteria for registration;
  2. Combined with effective advertising, can make all the difference between a company's success or failure in the marketplace.
  3. Has significant advantages over unregistered trade marks, including a more simple means of protecting what can become a very valuable asset.
  4. Prevents other traders from exploiting that asset.

Lawyer in Profile

Paul Ellis
Paul Ellis
Special Counsel
+61 3 9258 3524

Qualifications: LLB, Deakin University, BA (Political Science), Monash University

Paul is a Special Counsel in Maddocks Government and Not-for-Profit Commercial team. He specialises in:

  • the establishment, governance, operations, regulation and administration of charities and other not-for-profit entities,
  • in commercial arrangements for the procurement or supply of goods and services, including technology services, and
  • in compliance and enforcement activities undertaken by government agencies.

Paul is Maddocks' main authority in relation to the Personal Property Securities Act 2009.

He has an in-depth understanding of the government sector, as his experience prior to Maddocks includes 13 years with the Victorian Department of Justice.