What is a trade mark?
Which trade marks can be registered?
Should I do a search on my proposed trade mark?
What is the procedure for obtaining a trade mark registration in Australia?
How do I obtain overseas protection for my trade mark?
What rights does a trade mark registration provide?
What is so special about having trade marks in my business?
How should I go about selecting a good trade mark?
Are there rules that I should follow when using my trade mark?
How can I test whether I am using my trade mark correctly?
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A trade mark is a sign which distinguishes the goods or services of a trader from those of other traders. The sign may be a word, letter, numeral, picture, symbol, shape, smell, colour or any aspect of packaging, or any combination of these.
Registration of a trade mark confers on the owner the right to exclusive use and/or control of the use of the trade mark for the goods or services for which it is registered, or for related goods or services in certain circumstances.
In order to obtain registration, the trade mark must be capable of distinguishing the goods or services for which the trade mark application is lodged. A trade mark can be capable of distinguishing goods or services if it is ‘inherently adapted’ to do so, such as an invented word with no particular meaning.
Even a word or sign which other traders would ordinarily wish to use to describe the goods or services—and which would not be inherently capable of acting as a distinguishing trade mark—can be registered if it has been used to such an extent that the sign actually does distinguish a trader's goods or services.
However, a trade mark will generally not be registered if it is substantially identical with, or deceptively similar to, an existing trade mark application or registration for the same, or similar or closely related goods or services.
A search can be conducted to check for trade mark applications and registrations which would impede or prevent registration of your proposed trade mark application, or which would be infringed by the use of your proposed trade mark.
It may also be advisable to conduct a search of common law (unregistered) trade marks, business and company names and domain name registrations prior to filing or using a proposed trade mark in order to identify possible conflicting rights.
Searching can never be conclusive and merely reduces the degree of uncertainty. Searching is generally recommended before substantial expenditure is contemplated, such as before filing many foreign trade mark applications or before any significant commercialisation of goods or services for which the trade mark will be used.
Trade mark registrations are granted on applications filed at IP Australia, which incorporates the Australian Trade Marks Office.
The application must specify the trade mark itself, and include a list of all the products or services which are sold, or are intended to be sold, under the trade mark. If the trade mark is a logo, a representation of the logo must be attached to the application.
Examination
Approximately six months after filing the application, an examiner of trade marks will review the application and conduct a search to check whether the trade mark meets the criteria for registration.
An opportunity is provided to overcome any objections raised by the examiner by counter-argument, possibly accompanied by evidence and/or amendment. Any objections raised by the examiner should be overcome by 21 months from the date of the examiner's first report.
Registration
When the examiner is satisfied that there are no outstanding objections and the opposition period expires. the application proceeds to registration and a registration certificate issues upon payment of the registration fee.
Term of registration
The term of a trade mark registration expires 10 years from the date of filing the initial trade mark application. The trade mark registration may be renewed indefinitely for further period(s) of 10 years.
Most countries are members of an international convention which allows foreign trade mark applications to claim the benefit of an Australian trade mark application, provided they are filed within six months of the Australian application.
It may still be possible to file trade mark applications and obtain a valid trade mark registration after the six month date without claiming the benefit of the Australian filing date, provided there has been no earlier use of the trade mark, or earlier filed trade mark application by another party in the country concerned.
A trade mark registration allows the owner of the registration to prevent the non-authorised use of the trade mark in relation to the same, or similar or closely related, goods or services or, in the case of famous trade marks, in relation to any goods or services.
In the event that infringement of a registered trade mark occurs, the owner of the trade mark may obtain legal relief to stop the infringement and to claim damages or an account of profits.
The trade mark registration can be assigned or licensed to others, for example, in return for payment to the owner of the registration.
The decision to adopt a trade mark can represent a very important step for a business or company. For example:
- your trade mark will act as a line of communication between yourself and your clients and distinguish your goods and services from those of your competitors
- your trade mark will become an important asset of your business or company and contribute to the goodwill generated by your business or company
- your trade mark should be chosen carefully and protected by registration under the Trade Marks Act and correctly used
- a registered trade mark gives you an enforceable right to prevent others from using the trade mark in connection with the goods or services for which it is registered.
Note, however, that business or company name registrations DO NOT provide ownership or a monopoly property right in a name as do trade mark registrations (see Business Names FAQs for more information).
The following step-by-step process gives you a guide for correctly selecting your new trade mark.
Step 1
Wherever possible, it is best to adopt a trade mark which is:
- easy to pronounce
- easy to spell
- easy to remember
- easy to reproduce verbally or in writing
- can be used worldwide without alternative meanings in other languages, and
- easy to distinguish from any trade marks used by your competitors.
Step 2
Trade marks with the following features are relatively easy to register and protect, and there is usually sufficient opportunity for those with imagination to derive an appropriate mark:
Best
Newly invented words with no meaning, such as XEROXTM for photocopiers or MECCANOTM for construction toys.
Next best
Random or arbitrary names—while these names may have an existing meaning, this meaning is not connected with the goods or services they represent, such as SURFTM for washing powders or PELICANTM for pens.
Next best
Suggestive names are usually the first to spring to mind as they tend to identify some aspect of the goods or services that they represent, but they can be difficult to register. Examples are OXOTM for meat extracts, BUSHELLSTM for tea and BAND-AIDTM for bandages.
Last
Descriptive or laudatory names are the hardest to register and offer the least protection. For example, it would be almost impossible to obtain a registration for PERFECTION for soap.
Step 3
Make sure that you eliminate any marks having the following negative characteristics as they are very difficult to register:
directly descriptive words, such as HI-LUM for bright lights. Generic words used for a common product or service, such as SPEEDY for taxi service.
ACRONYMS which can be unpronounceable and confusing.
Step 4
Draw up a list of your possible marks and ask yourself the following questions:
- does the name have a similar sound or ring to that used by another party? For example, ELNATM, for sewing machines, is a well-known trade mark. A small variation like HELNA would be confusing
- is the name or mark currently in use, or is it perhaps an existing business or company name?
- would the mark be one which your competitors may automatically wish, or be inclined, to use?
- will your customers make an immediate and lasting connection between the mark and your company? and
- is the mark clever, pleasing and durable; or dull, fashionable and likely to lose its appeal?
Yes, there are guidelines you should follow to prevent losing the rights you have obtained in the marks used by your business.
When using your trade mark:
- never copy or imitate in any way another business or company's names, trade marks, logos or get-up
- in some cases, a search of the Business Names and Company Names Register, as well as the Trade Mark Register, should be conducted before adopting your trade mark
- use your trade mark in a manner commensurate with the image you require
- avoid using silly cartoons, jokes or generic applications of your mark
- use your trade mark consistently
- never change the spelling or the appearance of the mark without first discussing the proposed changes with your patent and trade mark attorney
- distinguish your trade marks from the surrounding words
- it is suggested that you use a trade mark symbol next or near to your trade mark
- unless your trade mark is in a stylised form, begin your trade mark with a capital letter
- always use your trade mark as an adjective
- never use your trade mark as a noun or verb, and
- accompany your trade mark by a generic term, for example, ELNATM sewing machine.
A useful cross-check of correct trade mark usage is the following quick test:
Any sentence containing your trade mark should still make sense when your trade mark is removed. For example:
Correct use: The ELNATM sewing machine is very efficient.
Incorrect use: The ELNATM is very efficient.
If you need help with your trade mark registration, please contact us for further assistance.
