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What is a Trade Mark?
A trade mark is a distinctive sign used to distinguish the goods or services provided in the course of trade by one person from goods or services provided by any other person. A trade mark can be a word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or even scent.

What are the significance of the symbols ™ and ® ?
The symbol ™ next to a phrase or image means that the phrase or image is being used as a trade mark but is unregistered. The ® symbol signifies that the trade mark has been registered.

Why do I need to register a trade mark, I have already registered my business name or company name?
Business name registrations are not designed to give the business owner any proprietary rights in that name or the exclusive right to the use of that name in trade and commerce. Further, names registered with the State business name registries are not checked by them against the Australian Trade Marks Register, often leading to the situation where the business name registered is deceptively similar or even identical to a registered trade mark. The business owner is then often in the position that their name will have to be changed to avoid trade mark infringement.

It is therefore essential when registering a business name to ensure that a thorough search of the Australian Trade Marks Register is conducted at the same time, or preferably before, so as to avoid any potential disputes arising in the future.

If a search of the Australian Trade Marks Register reveals no similar marks to my trade mark do I really need to register it to stop others from copying or using it somehow ?
No. It is true that if you are applying your unregistered trade mark to goods or services there are remedies available to you if you discovered someone was using your trade mark or one that was very similar. These remedies are obtained by commencing an action against the infringer for "passing off", and also the statutory offences of misleading and deceptive conduct.

The problem and difficulty with taking such actions with an unregistered trade mark is that extensive evidence needs to be provided to the court as to your reputation in the marketplace and likelihood of deception and confusion. If you have only recently commenced trading, or your goods and/or services are not widely known, it will be very difficult to succeed in such an action. Indeed, even if you have the requisite reputation, proving it, and the likelihood of confusion in court, can be a costly exercise.

Accordingly, the most effective way in which to protect your trade mark is to register it.

Registration also provides notice to any new entrant to the market that your trade mark is not available for use thus avoiding the situation of others inadvertently using your trade mark. This can be of considerable commercial advantage as less time and money is wasted on settling trade mark disputes.

 

What can I register as a trade mark?
You can register a letter, a word or combination of words, logos, graphic representations of your get up, slogans, shapes, colours, even scents and sounds can be registered as trade marks provided that they are capable of distinguishing your goods and/or services from those of other traders.

What would be difficult to register as a trade mark?
The general principle is the more likely it is that another trader would want to use that particular word or sign in relation to their products or services, the less likely it is that it will be capable of distinguishing your goods, and thus, less likely to be registrable without significant evidence to the contrary.

The category of words and phrases that are generally not capable of registration are words that suggest:

  • kind;
  • quality;
  • quantity;
  • intended purpose;
  • value;
  • time of production;
  • geographic origin; and
  • surnames.

What Protection can I get if I register my trade mark?
As the registered owner of a trade mark you are entitled to the exclusive right to use that trade mark in Australia. Further, you would be entitled to relief if the trade mark has been infringed. The relief available under the Trade Marks Act 1995 (Cth) is much easier to obtain due in part to the fact that the owner of registered mark need not prove reputation in the same sense as is required under the common law action of passing off. This is a great advantage to you as registered owner of the trade mark.

What are trade mark Classifications and why are they important?
All goods and services are divided into 45 classes - 34 for goods and 11 for services - by "The International Classification of Goods and Services", a listing maintained by the World Intellectual Property Organisation (WIPO).

When you apply for a trade mark you need to nominate the classes of goods and services you would like the trade mark to be registered for. This is important as you cannot generally apply for trade marks you do not intend to use. It is therefore important to properly assess what goods and services you are likely to need registration for. Your trade mark rights for infringement will be dependent on this aspect of the registration as noted below.

When will a trade mark infringe my registered trade mark?
In general terms, your registered trade mark will be infringed if it, or a trade mark which is deceptively similar to it, is applied to the same or similar goods or services for which your registration has been obtained. You do not need to prove any reputation or likelihood of deception or confusion when the infringing goods or services are the same as the registered goods or services.

However, if the same trade mark is applied only to similar goods or services to those you have registered, you will need to prove that people would be likely to be deceived or confused when they encountered the infringing mark.

There is also extra protection for "well known marks" such that even if their mark is applied to totally unrelated goods and services infringement occurs if they can prove that the use of the trade mark would be likely to suggest a connection between those unrelated goods or services and the owner of the well known mark and that the interests of the owner are likely to be adversely affected.

What constitutes deceptive similarity?
A trade mark is likely to be deceptively similar to another if it is so similar that its use would cause real confusion in the minds of consumers as to whether the two sets of products or the products and services in question come from the same trade source.

The factors the Court have taken into consideration include:

  • a visual comparison of the trade marks;
  • an aural comparison of the trade marks;
  • the type of customer who would buy those goods;
  • the way the goods or services are offered for sale and how this will affect the likelihood that the marks will be confused;
  • the concept or idea that will stay in the purchaser's mind after viewing the trade mark.
How long does my trade mark registration last?
A trade mark is initially registered for a period of ten years and continues indefinitely as long as the renewal fees are paid every ten years.
For further information about this area of intellectual property please do not hesitate to contact us for a free initial consultation to discuss the ways in which we may be able to help you in securing, protecting and enforcing your intellectual property rights.

These pages provide a summary only of the subject matter covered, without the assumption of a duty of care by Maxwell IP Lawyers or Peter Maxwell & Associates Patent & Trade Mark Attorneys. The summary is not intended to be nor should it be relied upon as a substitute for legal or other professional advice as it is prepared in a most general form without taking into account any particular set of circumstances.
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