What is a trade mark?
A trade mark is a ‘sign’ that assists consumers in distinguishing suppliers of competing goods and services from one another. [1] Associations made between your business’ trade mark and its reputation for quality, values and brand image can influence consumer choice and incite market competition between businesses. [2] A trade mark need not be registered in order for you to restrain another party from using a mark which is substantially similar or identical. However, once registered, your trade mark will attract greater protection and rights afforded by the Trade Marks Act 1995 (Act), which will enable you to protect against from unauthorised use by others.
Benefits of registration
Trade marks registered with IP Australia are recorded on the Trade Marks Register (Register) and are protected by the Act and common law rights. The benefits of registering a trade mark are:
- Exclusive right to use the trade mark which also provides an automatic right to sue anyone who seeks to infringe those rights. You will also have the ability to oppose the registration of a trade mark application lodged by someone else, if you think it is too similar too your trade mark.
- Proprietary right over the trade mark which means you can sell the trade mark or authorise use by others (for example through a licence, assignment or franchise). As your business’ reputation grows, the value of the trade mark will increase as an intangible asset.
- Notice to other competitors of the existence of your mark. As a registered trade mark will exist on the Register other businesses will be notified of your ownership. You may also alert others as to your rights in relation to your trade mark by use of the ® symbol, to put others on notice that your mark is registered and caution against unauthorised use.
- The right to relief where you have suffered, or are at risk of suffering, loss as a result of the infringement. You may be able to claim damages or an account of profits from a third party using your trade mark unlawfully, or obtain injunctive relief in relation to threatened use.
These statutory rights are not as readily available to owners of unregistered trade marks. While common law rights to such owners still exist, they are limited to passing off and misleading and deceptive conduct under Australian Consumer Law requiring a higher burden of proof.
Defences to infringement
It is unlawful for a trade mark, whether registered or unregistered, to be used by a third party who does not have the owner’s permission for such use. Infringement of a trade mark might occur where a competitor uses a trade mark which is substantially identical or deceptively similar to the owner’s mark. Or, the owner’s mark might be misappropriated by someone who does not have the rights to use it. Various defences to trade mark infringement may be argued, including honest concurrent use (where you have been using your mark continuously for a lengthy period, without notice of the other person’s mark); consent to use (where you can prove the other person has consented to your use of the mark); and unlikelihood of deception (where you can prove that there is no chance a consumer would confused your mark with the other person’s mark).
How to register
An application to IP Australia requires the careful selection of the class(es) for which registration is required. To ensure your trade mark is sufficiently protected without procuring unnecessary application costs, it is important to apply in respect of the type of goods and services for which your trade mark is used.
For assistance or advice in regards to the application process, please reach out to one of our Intellectual Property experts, Sophia Kailis at sophia@pragma.law or Aaron McDonald at aaron@pragma.law.
[1]Trademarks Act 1995 (Cth) section 17.
[2] See for example, Jeff Fromm, ‘Do Brands Still Matter to Today’s Modern Customer?’ Forbes (online, 13 March 2018).
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