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What is a Trade Mark?

Trade marks help to distinguish products, services, and businesses.

A trademark can be a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound, or scent.

The trade mark registration lasts ten years from the filing date. Registrants may renew their trade mark registration every ten years. Unlike patent and design registration, trade marks do not have a limited life span.

Trade Marks Authority in Australia

IP Australia is an Australian Government agency that administers intellectual property (IP) rights and legislation for trade marks. It also administers patents, design rights, and plant breeder’s rights.

The Trade Marks Act 1995 (Cth) is the legislation that governs trade marks in Australia.

Trade Mark Types and Examples:

Sound Trade Mark: Intel’s chime.
Action Trade Mark: The Toyota “Oh What a Feeling” jump
Shape Trade Mark: Coca-Cola drink bottle shape.
Device Trade Mark: ‘Swoosh’ tick.
Word Trade Mark: Google.

The first rule is that your trade mark must be unique and distinguishable, as a trade mark is often referred to as a ‘badge of origin’.

Trade Mark Classes

IP Australia requires trade marks to be registered in classes. There are a total of 45 trade mark classes to choose from. The first 34 classes are for goods, and the remaining trade mark classes relate to services. Once registered, a trade mark has exclusive rights to use the trade mark in the class.

Registrants may, and often do, select more than one trade mark class for their goods and services.

IP Australia’s pick list tool is open to the public, allowing users to search for their products or services.

Additionally, the IP registration process prompts applicants to select their desired classes. However, selecting classes is more convenient using the pick tool to research before commencing the registration process.

Registering Trade Marks

Before Registering a Trade Mark

There’s nothing worse than IP Australia rejecting an application for registration or someone objecting to its registration. This is especially true when a simple search could have uncovered the risk by performing a trade mark clearance search to determine if any similar trade marks exist that may prevent registration. Generally, clearance searches will involve an IP lawyer searching the trade marks register for registered marks, business and company name registers, and internet searches for common law marks.

Registering a Logo as a Trade Mark

There are three ways to register a logo as a trade mark:

1. Register logo symbol as an image mark;
2. Register the brand name as a word; and/or
3. Register the overall design as a ‘composite mark’.

Logos may contain more than one of the above.

Registering a Slogan as a Trade Mark

Register your company slogans as trademarks, just as Nike has done with “Just Do It”. Registration of slogans are done using word marks. As with all other forms of trade marks, it can be costly to prevent others from using slogans that are not registered due to the evidentiary burden to prove use and ownership.

Goods and Services

Remember to register the names of products and services names as trademarks.

Unregistered Trade Marks (Common Law Trade Marks)

The Trade Marks Act only protects registered trade marks. Unregistered trade marks, also known as common law trade marks, may be protected under the common law tort of ‘passing-off’ and provisions of the Australian Consumer Law that prevent misleading or deceptive conduct.

Passing Off under the Common Law

Common law trade mark holders should seriously consider registering their trade marks because protecting common law trade marks can be an expensive and lengthy process. The common law action to protect your trade mark is the tort of ‘passing-off’. Passing off is a common law to prevent a person from copying and benefiting from another person’s brand.

Misleading or Deceptive Conduct under the Australian Consumer Law

Schedule 2 of the Competition and Consumer Act 2012 (Cth) contains the Australian Consumer Law (ACL). Section 18 of the ACL prevents those in trade or commerce from engaging in misleading or deceptive conduct or conduct likely to mislead or deceive. This provision often prevents others from copying or mimicking your unregistered trade mark. The ACL allows courts to impose significant penalties for such conduct and award damages to a plaintiff for the loss due to the defendant’s breach.

Trade mark registration not only to protects your mark, but your business too. Therefore, consider registering your trade marks as early as possible and get advice from an intellectual property lawyer with trade marks experience before doing so.

International Trade Mark Registration

Trade marks may be registered internationally through IP Australia. Australia is a signatory to the Madrid Protocol, which allows applicants to register their trade mark in up to 125 member countries. Before registering an international trade mark, the applicant must have an Australian registered trade mark or an application filed in Australia. IP Australia then ensures the international application complies with the Madrid Protocol before submitting it to the World Intellectual Property Organization (WIPO). WIPO then submits the trade mark application to the applicable member country IP offices for review and processing.

Contractual Considerations

Preparing an agreement with the designers who will create works such as logos, slogans, and packaging is critical. Below are but a few important key aspects that often get overlooked.

Unique and original

Purchasers of designs must ensure that the works are unique and original. To that end, warranty clauses should be included in the agreement.

Assignment

The agreement must have an assignment clause that assigns the purchaser all rights in the design and ownership. In most cases, ownership of intellectual property must be assigned in writing. Failing to do so may only entitle the purchaser to a limited (implied) licence to use the design.

Indemnification

Gain an indemnity from the designer in the agreement. If the designer creates a work that infringes on a third party’s rights, and the third party sues the trade mark owner, the indemnity clause will mean that the designer will (likely) be held responsible for damages and costs.

Employees

Ensure that designers warrant that they only use employees to create designs. If the designer engages a contractor, there is a risk that the contractor may own any work the contractor produces.

Outsourcing Risks

Avoid outsourcing trademark design to designers located in other countries. Agreements can be costly and difficult to enforce, especially if the designer is in a developing nation.

Trade Mark Infringement

If a person or company uses another’s trade mark, a court may order the defendant to pay damages or an account of profits.

Account of Profits

An account of profits is a court order that requires the defendant to pay the plaintiff a portion of the profits that resulted from the defendant’s infringement.  A court will only award damages or an account of profits for a breach of a trade mark owner’s rights. Additionally, the unsuccessful party in a trade mark infringement proceeding is likely required to pay the other side’s legal costs.

Damages

Damages are an order for the loss of business that a business that a trade mark owner sustained as a result of the defendant using its trade mark. The court may also award special damages, depending on the flagrancy of the breach.

Cease and Desist Letter

Except for an urgent injunction, the first step in a trade mark infringement proceeding is for the plaintiff to send a cease and desist letter. This letter puts the alleged trade mark infringer on notice that the recipient is breaching the trade mark rights of its owner. The cease and desist letter will also include a demand – typically requiring the infringing party to stop using the mark by a specific date, failing which, the trade mark owner will (or may) commence proceedings against the alleged infringing party.

The cease and desist letter is an essential step in civil procedure. Most intellectual property disputes, including those involving trade marks, are heard in the Federal Court of Australia. The Federal Court Rules require litigants to file a Genuine Steps Statement to show that the plaintiff has taken reasonable steps to resolve the dispute before commencing legal action.   A cease and desist letter is often used to prove those genuine steps.

If you receive a cease and desist letter, please get in touch with an IP lawyer immediately.

Frequently Asked Questions

Where Do I Register a Trade Mark in Australia?

Trademarks must be registered with IP Australia.

How Much Does a Trade Mark Cost?

A trade mark costs $250 per class through IP Australia. If you decide to have a lawyer assist with registration advice, the lawyer’s costs will be in addition to IP Australia’s registration fees.

What is a Trade Mark Class?

Classification of goods and services. There are 45 trade mark classes ranging from manufacturing to printing, computer goods to textiles to air and marine craft. When registering a trade mark, registrants must nominate the class or classes in which the trade mark requires protection.