Trade mark basics

What are trade marks?

Trade marks are names, words, logos, aspects of packaging, shapes, colours, scents or combinations of these which distinguish goods or services of one person from those of another.

The main requirement for registration is that the trade mark should be capable of distinguishing goods or services. Marks which are simply descriptive of the goods and services or which consist of commonly used words such as “Super” or commonly used logos such as grapes for wine, may be difficulty to register. However, if it can be shown that the trade mark has been used to such an extent that it does distinguish the goods or services of the applicant, registration may be obtained.

Types of trade marks:

• Standard commercial trade marks are used to distinguish goods or services offered or approved, by the trade mark owner from those of others. Most trade marks fall in this category.
• Certification trade marks are to show that a certain standard has been attained in relation to quality, accuracy or other characteristics of goods or services. Examples include fair trade and organic product certifications.
• Collective trade marks are used in relation to goods or services offered by members of an association.
• Defensive trade marks can be registered for well-known trade marks in classes of goods or services in which the owner does not actually intend to use the mark. Defensive marks cannot be struck off for non-use and are designed to minimise consumer confusion if a business attempts to use a well-known mark in unrelated classes of product or service.

The rights given to trade mark owners

A trade mark registration gives its owner the exclusive right to use the mark in relation to particular goods and services. Trade mark owners can stop other people from using substantially identical or deceptively similar trade marks for the same class of goods or services, even if:

• the registered mark has no reputation and
• the unauthorised use is not confusing.

The registration term is for a ten year period from the date on which the application was filed, renewable upon payment of the official fee.

The advantages of trade mark registration

Although it is possible to protect unregistered trade marks, registration of a mark under the Trade Marks Act provides a number of advantages, including:

• Automatic protection
  Without registration you cannot prevent unauthorised use of a mark unless it can be shown that reputation exists in the mark and the unauthorised use is misleading or deceptive. Proving these elements can be a costly and an uncertain process.
• Australia-wide protection
  Registration normally gives rights throughout Australia, even before the trade mark has been used. Rights to trade marks which are not registered are generally limited to the area in which the reputation exists.
• Creation of a tangible asset
  Registration of a trade mark converts otherwise intangible reputation and goodwill into concrete personal property rights that can be licensed, transferred and sold to others.
• Cost effective enforcement
  Registration of a trade mark lets third parties know the trade mark is taken; provides a defence to allegations of infringement; facilitates acquisition of registration overseas; can block registration of deceptively similar trade marks by others; becomes a deterrent to adoption of deceptively similar trade mark by others; and increases the prospects of success in resolution of domain name disputes.

Have more questions? We have answers.

Davies Collison Cave has been registering and protecting trade marks for over 100 years and we file over 2,000 trade mark each year. Our experience and focus mean that you get the best advice and an international perspective. We encourage you to meet our trade mark attorneys and get in touch to see how we can help you.