What is a Trade Mark?
Trade marks may include words, devices, sounds, colours, scents, shapes, and actions. Practically speaking, most registered trade marks protect logos, product or service names, slogans, and aspects of packaging.
Please also read the Trade Mark Guide.
Common Law Trade Marks
A common law trade mark is a mark that is not registered with IP Australia. “common law trade mark” and “unregistered trade mark” can be used interchangeably. The advantage of a common law trade mark is that it doesn’t cost anything.
However, to protect a common law trade mark, holders may rely on the common law tort of ‘passing off’, a legal action in which the plaintiff seeks to prevent a person from trading off the reputation or goodwill associated with the plaintiff’s business. However, taking legal action for passing off, common law trade mark holders must prove the mark has a reputation, that the infringing party made a misrepresentation, and that the misrepresentation caused the plaintiff damage.
Unregistered trade mark holders may also gain protection under the Australian Consumer Law (ACL). Specifically, section 18 of the ACL may allow plaintiffs to claim that the defendant used the mark engaged in misleading or deceptive conduct, which caused damage to the plaintiff.
These requirements to enforce common law trade marks can be time-consuming and costly.
Registered Trade Marks
Registered trade marks are that holder registers with IP Australia – the government body responsible for administering intellectual property in Australia. Registered trade marks are protected by the Trade Marks Act 1995 (Cth) (‘Trade Marks Act‘):
“… 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.”
any letter, word, name, sign, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
Once an applicant applies to IP Australia for trade mark registration, the application will undergo an “examination period”. During this period, the trade mark examiner will review the application. If there are no other similar marks on the register and no objections to the application, the trade mark will be registered on the IP Australia trade marks register.
Please also take a look at the Intellectual Property Guide.
Trade mark registration provides proof of ownership of exclusive rights to the mark and when those rights commenced. However, trade mark registrants must use the trade mark in commerce within three (3) years; otherwise, a person may apply to remove the trade mark from the register for ‘non-use’.
Registered trade marks can be valuable assets that can increase a business’s value, as this intellectual property can be valuable. Common law trade mark owners need to seriously consider registering all trade marks in their business to get proper protection and to help prevent costly and protracted disputes.
While it is wise to register a company name and logo as a mark, companies must be aware of registering packaging, slogans, and product and service names.
Speak to an intellectual property lawyer to avoid trade mark registration issues.
Trade Mark Takeaways
- Unregistered trade mark can be protected at common law, provided that the mark holder can establish that the mark has a reputation and the infringing party makes a misrepresentation that causes damage (or is likely to cause damage) to the plaintiff.
- Trade marks can be protected under the ACL if the plaintiff can show that the infringing party has engaged in misleading or deceptive conduct.
- Unregistered trade marks can be expensive to enforce.
- IP Austalia’s trade mark register provides proof and notice of ownership.
- Trade mark registration makes it easier to prevent others from registering a mark identical or similar to your trade mark.
- A registered trade mark is a valuable asset that often increases the value of a business.
