This article talks about whether you should register a trade mark.  A trade mark is a right that may be granted over a word, phrase, letter, number, sound, smell, shape, logo, picture or packaging that your business uses to represent its products and services.

Company Name vs Trade Mark

When registering a company or business name, you don’t own any intellectual property rights in the names themselves. The Government reserves company names by placing the name on the ASIC register, associating the name with the Australian company number (ACN).  Upon registration, there is no legal mechanism to protect the company name as a trade mark – at least not until you begin trading with that name.

Common Law Trade Mark

Essentially, a common law trade mark is a mark that is not registered in the IP Australia trade mark database. The term “common law trade mark” and “unregistered trade mark” can be used interchangeably.

Although you’re unlikely able to enforce your rights against the company name or business name itself, you may gain common law trade mark rights once you build a reputation in the marketplace for the name or mark, provided that the name is unique and is not made up of generic words.

To protect a common law trade mark, holders may rely on the Australian Consumer Law’s misleading and deceptive conducts to prevent others from using the mark that you have worked so hard to build a reputation for.

The advantage of a common law trade mark is that it doesn’t cost anything.

The disadvantages of a common law trade mark are that it can take time to establish enough of a reputation to enable

Further, if you’re involved in a dispute or litigation regarding your trade mark, you will likely need to go to lengths to prove the trade mark exists, and that you have exclusive rights to that mark.  This requires extensive evidence to support any claim to intellectual property that subsists in the trade mark.

The additional burden to prove existence and ownership of the trade mark at common law usually requires additional time and cost to collate that evidence, compared to collecting evidence to prove intellectual property rights in a registered trade mark.

How to Protect a Common Law Trade Mark

To protect a common law trade mark, you will need to be very proactive.  This may involve monitoring the IP Australia trade mark database and also taking steps such as performing Google searches for those who are potentially infringing your mark.

If a trade mark application is submitted to IP Australia, a common law trade mark holder may object to the application during the examination period.

Registered Trade Mark

A registered trade mark is one that has been approved by IP Australia and therefore appears on the IP Australia database.  Where a common law trade mark usually requires significant evidence to prove, proof of ownership of a registered trade mark is established by virtue of it being on the IP Australia trade marks database.

It is important to be aware of trade mark classes for various types of products and services. It is common for the same trade mark to operate in different classes.  For example “Snap” is used as a trade mark in Snap Fitness and Snap Printing.

Once a trade mark is registered, the examiner has the opportunity to reject any newer trade marks applications that are submitted that are deceptively similar to those already on the trade marks database – another reason to register your trade mark.

See article: Trade Mark Registration Process in Australia.

Registering a trade mark is relatively inexpensive at $250 per class.

Summary

Registering your trade mark provides much more certainty as to your specific intellectual property rights and doesn’t require nearly as much proof to establish a reputation as an unregistered (common law) trade mark does.

Get the proper advice before registering a trade mark, as proper searches of the IP Australia trade mark database will need to be performed, as well as other searches. You will also require legal advice on which class, or classes is most appropriate to register your trade mark in.

If you are considering selling your business at some stage, the trade mark is an asset that can increase the value of your brand.  When doing due diligence before a purchase, the buyer will almost always assess the value of trade mark and other IP.

Trade mark takeaways:

  • Intellectual property rights in an unregistered trade mark are enforceable, provided the mark has a significant reputation in the marketplace
  • Unregistered trade marks can be difficult and expensive to enforce
  • Registered trade marks provide certainty of ownership and the proof of date of when the intellectual property rights commenced
  • Trade mark registration makes it easier to prevent others from registering your trade mark, as IP Australia checks registered marks during the examination period.
  • A registered trade mark usually increases the value of your business.

What is a common law trade mark

A common law trade mark is one that is not registered on the IP Australia trade mark database.

What is IP Australia?

IP Australia is an Australian government administrative department that is responsible for overseeing intellectual property legislation relating to trade marks, copyright, patents and designs.

What is a cease and desist letter?

A cease and desist letter is sent by a party who believes another party is using their trade mark, or other intellectual property, demanding that they cease using the IP that they allegedly own.