5 Registering Trade Marks
6 Contractual Considerations
9 Trade Mark Infringement
A quick note on spelling: In the United States, it is spelled “trademark”. However, in Australia, it is spelled “trade mark”.
What is a Trade Mark
Trade marks help to distinguish products, services, and businesses.
A trade mark can be in the form of a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
The trade mark registration period is ten years from the filing date, which registrants may renew indefinitely every ten years.
Trade Marks Authority in Australia
IP Australia is an Australian Government agency that administers intellectual property (IP) rights and legislation for trade marks. IP Australia 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, registrants are prompted to select classes on registration during the registration process. However, selecting classes is more convenient using the pick tool to research before commencing the registration process.
Registering Trade Marks
Registering Your Logo as a Trade Mark
Interestingly, there are three ways to register a logo as a trade mark:
1. Register the mark itself, which is the icon or symbol aspect of the logo design.
2. Register the brand name as a word.
3. Register a ‘composite mark’ to protect the logo’s appearance.
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 is usually 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.
Registering Product and Service Names as Trade Mark
Remember to register the name of products and service names as trade marks. For example
It is critically important to have a proper agreement with the designers who will create works such as logos, slogans, and packaging. 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. Include warranty clauses in the agreement to that effect.
The agreement must have an assignment clause that assigns the purchaser all rights in the design in ownership. In most cases, ownership of intellectual property must be assigned in writing. Failing to assign in writing may only entitle the purchaser to a limited licence of the design.
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.
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 works that the contractor produces.
Avoid outsourcing trade mark design to designers located in other countries. Agreements can be costly and difficult to enforce, mainly if the designer is in a developing nation.
Unregistered Trade Marks (Common Law Trade Marks)
The Trade Marks Act will only protect registered trade marks. Unregistered trade marks, also known as common law trade marks, may be protected under the common law and the Australian Consumer 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’s brand.
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 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.
That is why it is best to register your trade mark as early as possible and get advice from an intellectual property lawyer with trade marks experience.
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.
Trade Mark Infringement
If a person or company uses another’s trade mark, the Court may order the defendant to pay damages or an account of profits.
Account of Profits
An account of profits is an order in which the defendant pays a percentage of profits they made from using the trade mark to the trade mark owner. A court will only award damages or an account of profits for a breach of one’s trade mark rights, but not both. Additionally, the unsuccessful party in a trade mark infringement proceeding is likely required to pay the other side’s legal costs.
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 steps 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.
Please immediately contact an IP lawyer if you receive a cease and desist letter.
Frequently Asked Questions
Where Do I Register a Trade Mark in Australia?
Trademarks may be registered through 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, your lawyer’s costs will be on top of IP Australia’s registration fees.
What is a Trade Mark Class?
A trade mark class or 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.