TRADE MARKS

A trade mark distinguishes the goods and services of one trader, e.g. Nike, to those of another, e.g. Reebok. A trade mark is used commercially and can be a word, phrase, picture, logo, letter, numeral, shape, colour, sound, scent or aspect of packaging - but not everything can be registered as a trade mark. A mark which contains or consists of the following could be difficult to register:

• Descriptive terms, such as ‘shoe’ for shoe products;
• Common surnames and geographical place names;
• Words or phrases that favourably promote goods or services, such as ‘Best Quality’;
• Words or phrases common to trade such as ‘On Sale’;
• Marks that are identical to, or very similar to, earlier filed trade marks claimed for similar goods or services;
• Marks that are scandalous or misleading;
• Marks such as ‘ANZAC’ that are protected by other Australian laws; and
• Marks that are prohibited by international treaty obligations, such as national flags.
  

Where to start

Before you develop your new logo or brand, it is a good idea to start by searching for existing trade marks similar to yours. This will help you identify any marks that could prevent you from obtaining registration.

In some instances, searching can be complex and it is likely that you will be basing significant commercial decisions on the results (and the interpretation of the results) of your search. It is often a good idea to consider using a commercial search company or trade mark attorney to conduct a thorough search and analysis for you. A searching firm and/or trade mark attorney can also help you to develop your own search strategies for maintaining your trade mark assets.

It is strongly recommended that your search strategy includes a search of the Australian Trade Marks Database (ATMOSS). It is free to search and can be done online at www.ipaustralia.gov.au or you can conduct a search in one of IP Australia’s state offices.
Call 1300 651 010 to find the office nearest to you.

IP Australia also offers a Business Names Applicant Search Service (BASS). For a fee of $40 (GST inclusive), IP Australia staff will conduct a thorough search of the trade marks database and issue a report showing if there is an existing registered trade mark which is identical or very similar to your proposed business name—however some limitations to the search apply. You can apply for a search by calling 1300 651 010 during business hours, or you can mail or fax your request. For more information on this service, see www.ipaustralia.gov.au/trademarks/what_names.shtml.

Trade mark application process

Any person can apply to register a trade mark. The application should be made in the name of the person or company who owns the trade mark. Trade mark applications go through an examination process before being granted. A trade mark will be registered provided it meets the requirements of the Trade Marks Act 1995, there are no objections to your mark and your registration fees are paid. For more detailed information on the trade mark application process, visit www.ipaustralia.gov.au/trademarks/process_index.shtml

You can apply by post, online or at IP Australia’s state offices. If you would like more information about the application process phone the Customer Service Network on 1300 651 010, or visit IP Australia’s website at www.ipaustralia.gov.au

Registered trade mark rights - what do I get for my registration?

If you have a registered trade mark, you are entitled to the following:

• The statutory right in Australia to use it as a ‘sign’ or brand on the goods or services specified in the registration;
  
  
• The right to authorise or licence other people to use the registered trade mark on the goods or services specified in the registration;
  
  
• The right to sell or deal with the mark as personal property;
  
  
• A registration which covers the whole of the Commonwealth of Australia;
  
  
• The option to file a notice with the Australian Customs Service objecting to the importation of goods that infringe the registered trade mark;
  
  
• The right to take court action to stop others using the trade mark inappropriately; and
  
  
• The option to file international applications, based on their Australian application / registration, through the international trade marks system (the Madrid Protocol).
  

Trade mark registration costs

The cost of registering a trade mark depends on how many different goods and/or services you wish to use your mark in relation to. There are 45 different classes in which a trade mark can be registered and these classes cover all the different types of goods and services. At the time of publication, the application fee is $150 per class (or $120 per class if the application is filed electronically) and, if the application proceeds to registration, the ten year registration fee is $300 per class. Visit www.ipaustralia.gov.au for more information on trade mark fees. Fees for professional help from a trade mark attorney or lawyer are an additional cost. A registered trade mark can last for an unlimited amount of time provided you continue to pay renewal fees to IP Australia.

What about protecting my brand overseas?

If you are thinking about expanding your business overseas or think that your market lies in specific countries, then you should consider trade mark protection overseas. Australia belongs to a treaty relating to international registration of trade marks. The treaty, called the Madrid Protocol, provides Australians with a simpler and, in many cases, less expensive way of seeking trade mark protection overseas and presents several advantages to applicants seeking protection in any of the other countries who are part of the Protocol.

The advantages to using the Madrid Protocol system include:

• Only a single international application is required;
• It is in one language (English, French or Spanish);
• It is filed through the Trade Marks Office of the home country (in this case, Australia); and
• Protection can be sought in more than 65 countries overseas, including the United States and the European Union, and more countries are planning to come on board.

For more information on international registrations and the Madrid Protocol refer to the IP Australia website at www.ipaustralia.gov.au/trademarks/international_index.shtml.

Unregistered trade marks

Registration of trade marks is not compulsory and in certain circumstances registration of a trade mark may not be a priority for some businesses. However, if your trade mark is not registered and another person uses it you may have to take a passing off action under common law if you want to stop them (see IP Glossary for a definition of ‘common law’ trade mark and ‘passing off’). In many cases this can be more difficult and more expensive than taking infringement action if you own a registered trade mark. It is important to note that as some trade marks are unregistered, they will not appear on IP Australia’s trade mark database.

So what’s the difference between ®, ™ and ©?

Many people are confused by those often-used symbols of ®, ™ and © that accompany a name, logo or brand. The ® symbol may only be used with a registered trade mark—this lets others know that you have registered the mark and have the right to use that brand or logo.

The ™ symbol can be used alongside a mark at any time, whether or not it is registered. It indicates that the use of the relevant ‘sign’, whether a word, phrase, picture, logo, letter, numeral, shape, colour, sound, scent or aspect of packaging is being claimed as a trade mark.

The © symbol on the other hand, indicates a claim to copyright ownership, which is a different intellectual property right altogether. Copyright will be discussed in more detail later in this section.

Names - trade marks, company, business, domain and your business

One of the first steps you will take with your new business is to register a business name. But where do company names, domain names and trade marks fit in, and what do they do?

It is important that you understand what each registration gives you. The table on the next page explains the main differences between each registration. Unfortunately, some people mistakenly believe that business name registration gives them common law trade mark rights. A legal adviser can help you to determine what is appropriate common law trade mark usage and how you can prove common law trade mark rights in court if you ever need to take a passing off action. Mistaken assumptions about business names and trade marks can have a dire impact on the future of your business.

Search, and be sure!

A common misconception is that by registering a company, business or domain name you are immune from of the possibility of infringing another person’s registered trade mark. Imagine registering a business name, setting up your business and paying for stationery, shopfront signage and advertising, only to be told you must change your name because you are infringing an existing registered trade mark—it could be disastrous for your business.

The table below briefly outlines different registrations, their functions and other details:

Patent it

A patent can be granted to someone who has created something that is inventive, new and useful. Essentially a patent is an exchange; the patent holder is granted a monopoly which allows them to stop others from making, using or selling your idea or invention. In return, their ‘idea’ and how to create or repeat it is published in patent databases.

A patent can protect inventions and innovations such as machines, industrial processes, pharmaceuticals and their productive methods, computer hardware and software, toys, electrical appliances, plants and other biological/biotech products and processes, even some business methods—in short, almost anything commercially useful. Patents can give you protection, subject to the payment of annual fees, for either eight or twenty years, depending on the type of patent granted.

The cost of patenting will vary on such things as the type of patent being granted and the number of countries in which you intend to register your patent. You should speak to IP Australia, a patent attorney or an IP lawyer to get a better idea of the costs involved in patenting your invention. You should be aware that there is no such thing as a world patent. For more information on seeking patent protection overseas, visit www.ipaustralia.gov.au

You cannot patent artistic creations, principles, theories, mathematical models or any purely mental processes with no tangible commercial application.