Perspective

TradeMarks | An Overview

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What is a Trade Mark?

A TradeMark is a sign used in the course of trade by a trader to identify and distinguish its goods or services from those of another trader.

What can be protected as a trade mark?

A TradeMark may consist of any stylised letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or a combination of any of those things. A TradeMark may be much more than a brand name or logo.  Provided the brand element operates to distinguish your goods or services, conceivably it could be protected as a TradeMark.

The concept of distinctiveness pervades the TradeMark registration system.  Brand elements such as a single colour, numeral, letter or common place graphic will be more difficult to register as they are perceived as less distinctive.  The TradeMark registration system is loath to grant an exclusive right which ultimately might prevent other traders from legitimately using elements to describe their goods or services.

A TradeMark may be unregistered or registered.

Unregistered TradeMarks are protected by relying on claims of:

common law of “passing off”; and / or

“misleading or deceptive conduct” in the Australian Consumer Law (which is contained in the Competition and Consumer Act 2010 (Cth) (previously known as the Trade Practices Act 1974 (Cth)) and the various State and Territory Fair Trading Acts)

Are there advantages in registering a TradeMark?

Some good reasons to register a TradeMark include the following:

Brands are critical business assets and should be protected.

A registered TradeMark provides an enforceable right to stop others from using the trade mark (or similar mark) in connection with the goods or services (or in certain circumstances related goods / services). Unlike a business name or company name, a registered trade mark provides legal protection for traders.

An Australian TradeMark registration is a Federal right, providing protection in all Australian States and Territories.

A registration puts the public on notice of your rights in the mark and may assist in dissuading other traders from using or applying to register the same or similar mark.

In the event of unauthorised third party use, the owner of a registered trade mark may obtain legal relief to stop the infringement and to claim damages or an account of profits.

A registration is generally stronger and more cost effective than unregistered rights in challenging third party use / applications.

Many online service providers such as Google, Twitter, eBay, Facebook and Instagram generally require a trade mark registration as a prerequisite to challenge third party names. Conversely, if you receive a complaint from a third party, having a registration should improve your prospects in defending your position.

Priority – The TradeMarks Office will raise a TradeMark against a subsequently filed application to register a substantially identical or deceptively similar mark in relation to the same or similar / closely related goods / services.

A registration may provide you with a defence to a claim of TradeMark infringement brought against you by a third party.

The registration is a proprietary right than can be assigned, licensed or otherwise commercialised.

Provided a TradeMark is used correctly and the registration is maintained, a TradeMark registration can last forever.

What rights are granted by a TradeMark Registration?

An owner of a registered TradeMark is granted exclusive rights to:

use the mark in relation to the good or services with respect to which it is registered; and

prevent others from using a substantially identical or deceptively similar mark in relation to the goods or services registered by the mark.

In addition to challenging third party use, these exclusive rights assist in achieving commercial growth through models such as licensing and franchising.  As commercial IP lawyers, Gestalt are able to give specialist advice on licensing as well as negotiate, prepare and draft licence agreements.

What steps are involved in obtaining a TradeMark?

Search – Searches prior to filing an application are generally highly desirable and strongly recommended.  The purpose of the search is to identify, anticipate and possibly overcome an obstacle to use or registration.

Application – If there are no obvious hurdles revealed in the search, the next step is to prepare a TradeMark application.  This includes careful analysis in preparing a TradeMark “specification” describing the goods and / or services to be registered. Careful thought is also required in identifying the precise brand elements to protect as a TradeMark and the appropriate TradeMark owner as the applicant.

Examination – Approximately four months after filing, the TradeMarks Office examines the application.  It is possible to expedite the process.

At examination, the TradeMarks Office Examiner considers the TradeMark and issues a report on whether the TradeMark can be registered.  If there are objections raised in the examiner’s report, the applicant is given an opportunity to overcome the objections by submitting a reply to the report.

Acceptance – Once accepted, the TradeMark is advertised and any person can oppose registration on certain grounds.

Registration – If no third parties oppose registration, the TradeMark will be registered once the government registration fee has been paid.  A registration remains in force for a period of 10 years and can be renewed for a further 10 years upon payment of renewal

How do I protect my TradeMark overseas?

TradeMarks are territorial rights and are administered in each country individually, apart from the European Union (where a EU registration will cover the entire EU).  Foreign protection can be obtained by filing:

a national TradeMark application in each country in which you wish to seek registration; and

an application for International Registration for countries which are signatories to the Madrid Protocol.

A foreign TradeMark application will typically follow the process of the Australian application will be examined and assessed according to local TradeMark laws and practise.

How do I enforce my TradeMark if it is infringed?

After securing TradeMark registration / protection the owner may enforce the registration against an infringer.  TradeMark enforcement is generally a civil matter in most jurisdictions which means that legal action must be taken by the owner of the invention or by a party authorised by the owner, such as a licensee. If a negotiated settlement with the infringer cannot be achieved then civil court proceedings may be necessary in order to enforce the TradeMark registration.

Remedies for TradeMark infringement can include an injunction whereby an infringer can be legally stopped from continuing their infringing activity.  Other remedies can include financial compensation for damages and lost profits, destruction of infringing products and enforceable undertakings from the infringer not to engage in such activities in the future.  In some jurisdictions, criminal sanctions are available for the most flagrant of infringing acts.

The vast majority of infringement disputes settle or otherwise never reach the courts.  The threat of legal action is often enough to stop or curtail an infringer’s activities.  Often the mere existence of a TradeMark acts as a deterrent to competitors from using a substantially identical or deceptively similar TradeMark.

How is a TradeMark registration maintained?

TradeMark registrations are potentially a perpetual rights, provided renewal fees are paid.  In most countries TradeMark registrations are due every 10 years.

The failure to pay a maintenance fee by a deadline can result is substantial late fees or even irrevocable expiration of the TradeMark registration and removal from the Register.

A TradeMark must be used as a trade mark (i.e. to indicate a connection in the course of trade between the organisation and the goods and services to which it is applied) to maintain registration; otherwise it may be revoked for non-use.

In some countries (for example, the US) a TradeMark registration must be supported by evidence of use to maintain the registration.

A TradeMark Attorney will monitor these deadlines and will provide the owner of a TradeMark with timely reminders to ensure that these deadlines are not missed.  This type of service provides peace of mind and security for TradeMark owners who can overlook these deadlines when they are concerned with other day to day demands of their businesses.