Have you ever wondered if you should register a trade mark for your business? Here are our handy tips to help you make this decision:
What is a Trade Mark?
A trade mark is a sign used, or intended to be used, to distinguish the goods or services of one business from goods or services of another. It can be anything from a word, image, shape, colour, or even a sound or scent! Trade marks are fundamental way for businesses to market themselves and build a unique brand and reputation.
How do I Register a Trade Mark?
In Australia, trade mark registration is governed by IP Australia. The process can be complex, as objections can be raised by the trade marks examiner if the proposed trade mark does not meet the legislative requirements of the Trade Marks Act 1995 (Cth). The process can also be problematic, if other businesses can object to a proposed trade mark being registered. It is essential that the application is done properly and with due diligence.
Trade marks are filed in different categories called ‘classes’ and may be registered in a single class or multiple classes. For example, a business that produces beer or kombucha can register a logo or name in classes 32 and 25 which relate to beers/non-alcoholic beverages and clothing respectively. The more classes a trade mark is registered in, the greater the scope of protection. If another business owner then begins to use a logo or name on a beer bottle or t-shirt which is ‘substantially identical with’ or ‘deceptively similar to’ a registered trade mark, a trade mark owner can stop them from continuing to use their trade mark and may even seek damages or an account of profits.
What Are my Rights as a Trade Mark Owner?
A registered trade mark is a form of intellectual property and is therefore an asset which can be sold. The owner of a registered trade mark has the exclusive right within Australia to use their trade mark, and authorise others to use it – for example by way of licence.
Trade mark registration differs from copyright, whereby certain works can assume automatic protection and need not be registered. It also differs from business names and company names which are registered with ASIC but do not give the owner the exclusive right to use that name.
Can You Have a Trade Mark & Not Register it?
This is certainly an option, but you would be accepting a few risks:
If another business owner in Australia has a registered trade mark which infringes your unregistered trade mark, they may take action to prevent you from using the trade mark.
If another business owner in Australia has an unregistered trade mark which is similar or identical to your unregistered trade mark, then each of you may have difficulty stopping the other from using their trade mark.
In such circumstances, it may be possible to enter into a coexistence agreement with the other business owner so that you both may continue using the unregistered trade mark. However, problems may arise where you are prevented from expanding your business, customers mistake your business for the other, or another business with a registered trade mark takes action against you.
We have clients throughout Australia and can provide assistance with everything trade mark-related, from registering a new trade mark or navigating a trade mark dispute. If you need assistance, don’t hesitate to contact our office on 03 9070 9897.