Trade Marks
What exactly is a trade mark?
A trade mark is effectively a badge of origin. To be more specific, the Trade Marks Act defines a trade mark as a "sign" used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. A "sign" includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
It is important to bear in mind that a trade mark is something that can exist without registration. Such a trade mark is known as a common law trade mark and can be protected. However, there are significant benefits in obtaining registration of a trade mark, as is set out in the following section.
Do not confuse a business name with a trade mark! Just because you have registered your business name "Bazza's Chicken" does NOT mean that I am prevented from opening a take-away called "Bazza's Chicken". The registration of a business name is a State Government trading requirement for the protection of the consumer. It is not for the benefit of the business owner and is of little use in stopping others from copying your brands and trading name. Furthermore, obtaining a business name is no guarantee that you will be free to use the name.
A business name cannot stop another party from using your brand!
Why file an application for a registered trade mark?
The system of registering trade marks was devised in order to avoid the need to show reputation. As mentioned above, it is possible to protect a trade mark that has not been registered. In order to do so, it would be necessary to show that the trade mark had developed a substantial reputation. This can be difficult and expensive, particularly in court.
The fact that a trade mark is registered is sufficient basis to prevent unauthorised use of the trade mark. It follows that relying on a registered as opposed to an unregistered trade mark can save you significant legal costs when enforcing your right of ownership of the trade mark.
What are the basic requirements for registration?
It is difficult to register words and logos that are descriptive of the goods and services they are used to sell. This difficulty translates into increased costs and delays when attempting to obtain registration. As a rule of thumb, if other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods or services, you will probably get an objection from the examiner on the basis that your trade mark is not inherently adapted to distinguish your goods and services.
It is critically important that if you claim to be the owner of the trade mark, you are actually using the mark. "Use" in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods. "Use" in relation to services means use of the trade mark in physical or other relation to the services. It is possible to have use of the trade mark by the owner if the owner exercises control over the use of the trade mark.
Registered trade marks are vulnerable to removal from the register for non-use if they are not used by either the owner or an authorised user, for a continuous period of three years
Are you using your trade marks correctly?
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