Florence:           

Good afternoon everyone and welcome to today's webinar, Understanding Trade marks. Today I want to introduce our speaker, Natalia Kremenchutskaya. Natalia has worked at IP Australia as a trade marks examiner, and is now working in oppositions and hearings, as the assistant hearings officer, for over a year.

Now, I'll hand over to you Natalia.

Natalia:              

Thank you Florence, and welcome everyone. Here at IP Australia, we do a range of different things. We administer Australia's patents, trade marks, designs and plant breeders' rights. We undertake public education and awareness programs about intellectual property. We provide policy advice to government on intellectual property issues, and we contribute to trade negotiations and international forums and activities to improve IP rights protection globally.

Today we're looking at understanding trade marks and trade marks 101. We're going to go through some essential information that will help to assist you in choosing and filing a registrable trade mark. When you are implementing your branding strategy and looking to protect your intellectual property, trade marks are one of the key factors to ensure that customers know your brand and that you are legally protected and you have brand exclusivity.

Before you apply, there are some important considerations:

  • Firstly, you need to consider the difference between a trade mark and a business identifier
  • the range of trade mark types
  • the correct ownership
  • how your trade mark should be represented
  • what goods and services to apply for
  • does your trade mark have the capacity to distinguish your goods and services from those of other traders?
  • are there other similar trade marks with earlier protection?
  • does your trade mark contain prohibited, scandalous, or confusing content?
  • and what application options are best for your business.

So what is a trade mark? Companies expend a tremendous amount of resources on developing and protecting their products and their brand. It prevents consumer confusion, for example, if you want to buy a new television, you don't have to shift through a bunch of TVs, which are confusing or very similar to Sony or Samsung. You are able to identify the TV you want and not the knockoff brand. If you want the Sony, which could be based on past experience or company reputation or if you're looking for something different.

Registering trade marks. A trade mark is a sign used to distinguish the goods or services of one trader from those of another. You can identify when companies are identifying elements of their brand as a trade mark. This is done in two ways. So on the left, we have the symbol TM. This is used to show a mark is being used as a trade mark, but it is not registered. The symbol on the right, the letter R, is used to show that a trade mark is registered.

Trade mark registrations last for 10 years and can be renewed indefinitely. Here on the screen we have an example of the trade mark, PEPs for Coughs, Colds and Bronchitis. This trade mark was first registered in Australia in 1906 and has been registered since then. This registration has been going for 113 years. That's pretty amazing.

Now we're going to look at how trade marks differ from business names, domain names and company names. The difference between a business name, company name, domain name and a trade mark is often misunderstood. It's important to be clear about the differences because they're not the same and each will protect your business in a different way. Registering a business, company or domain name, does not give you any exclusive rights for your goods and services. Only a trade mark can give you that kind of protection. To demonstrate the difference, let's work through each type of business identity.

Business names are also known as trading names. This is the name under which your business operates and is connected to your Australian business number. It helps your customers find, identify it and connect with your business. A company name is one of the benefits to registering as a company, is being able to register... Sorry, being able to register a company name. A company is commonly identified as PTY Ltd. If you want to trade using a name other than your registered company name, you should register that trading name as a business name.

When we look at domain names, a domain name is your street address on the internet. It's the way people find your business online. Domain names are registered on a first come, first served basis. However, if a domain name is using a trade mark name, the owner of the trade mark can take certain actions to recover that domain name.

And now we come to trade marks. So trade marks give the owners exclusive legal rights under the Trade Marks Act to use the trade mark throughout Australia. Unlike a business, company or domain name, a registered trade mark lets you take action against other businesses using names that are the same or misleadingly similar to your trade mark.

In summary, a business name registration does not equal a trade mark registration. The business name regulator does not check the trade mark register before granting business name registrations. Unregistered trade marks are vulnerable to allegations of trade mark infringement. Therefore, the overall message is that a trade mark is like an asset, even though it's not a physical asset, it's quite a valuable one. You have the opportunities to license, franchise or sell your trade mark. If you choose to sell your business, your registered trade mark has value. Sorry, I'm just going backwards in the slides, everyone.

We're going to move onto ownership. So who will own my trade mark? The owner of a trade mark must have legal personality. To have legal personality, means to be capable of having legal rights and duties within a certain legal system, the legal right to own property in this case. To be eligible to be an owner of a trade mark, you need to be an individual, a company, an incorporated association, or more than one of these, in case of multiple owners.

A trade mark can also be owned by an unincorporated association or a body existing under legislation, for example, a registered charity. With an applicant, the applicant of a trade mark must have an address for service either in Australia or New Zealand with the exception of international registrations designating Australia. Usually the address for service of the applicant itself is that for the trade mark registration or that of an intellectual property attorney or solicitor. So someone who may represent the applicant can also be the address for service.

The applicant cannot be a business name or a trading name. The applicant should be the owner of the business registration, should be the corporation's name and not in the name of a director or shareholder, and should be in the name of a trustee rather than the trust name. You must use or intend to use the trade mark in relation to the goods or services included in your application. If the trade mark is to be used by a corporate entity and that is about to be formed, you can assign the trade mark to the new body once it has been formed.

So some examples that we have included here, when we look at individuals registering for a trade mark, they must have the full name on the application. For joint owners, you need to have the full name of each of the joint owners, whether they're individuals or companies. For a company, the full name under which a company is incorporated is required. And the trusts, the trust's name as the applicant should be replaced by the names of the trustees. So you cannot just have the name of the trust, you need to have the person who owns the trust or the trustee.

When it comes to trade mark registrations, the representation of the trade mark is very important. So what does my trade mark need to look like for an application? When you apply for a trade mark, the representation that you applied for needs to be very clear so that all aspects of your trade mark can be identified. As you can see on the slide with the example of Vegemite, the image on the left would not be acceptable because it is too blurry and unclear. So when you're registering for your application, you want to make sure that your word or image is similar to that of the example on the right.

What trade marks do I have? There are a range of trade mark types, so it is very important to figure out what aspects of your brand you want to trade mark. Common trade marks include words, images, a combination of a word and an image, or a slogan. Each of these trade marks would be considered as an individual application. Aside from the trade mark examples that we've just talked about, there are some less commonly known trade marks. And as you can see on the slide, there are shapes, colours, aspects of packaging, scents, sounds, movements, and even a combination of all of the above.

The first example that we have here is actually a sound trade mark of the Netflix tune. So if you've ever turned on your Netflix and you've heard the tune, that's a registered trade mark. The next trade mark that we have down in the bottom left hand corner, you might be familiar with this one, that is Salt Bae. So Salt Bae has come in and registered his trade mark as a movement mark and now that movement is registered on our register.

The image down the bottom is actually that of golf tees and that is registered for a scent. So this represents one of our only couple of scent marks that we have and it is the scent of a eucalyptus radiata on golf tees. If we look at the image in the middle, that one there is also a movement mark and it is the Auslan letters, A, T, E, from Deaf Services Limited. The one in the top right hand corner, that colour purple, anyone might have guessed this one already, so that's the colour registered for Whiskers and they have a particular purple shade that they've registered with us. And right down the bottom, if anyone's familiar with this one, that's of course the Lindt Bunny. It is important to remember that trade marks a more than words and images. If there are aspects of your branding that may include shapes, colours, movements, sounds, scents, any of these combinations, it is definitely worth including these in your branding strategy and seeking the correct type of protection.

So now I'm going to move onto the goods and services. When you apply to register a trade mark, you must provide a description of the goods or services you use or you intend to use your trade mark on. Goods or services need to be selected from one or more of 45 classes that we have. It is important to... when identifying your goods and services, you want to ask the following questions. You want to ask yourself, how does your business make money? What is your business in? So what industry is it that you use your goods or services in. What are your business name or business brand? What is it known for? And what products or services do you provide to others?

IP Australia has launched Trade Mark Assist and that can assist you with identifying the correct goods and services to apply for. There are also informative videos on our websites that can assist you with identifying the correct goods and services for your business. We'll go into a couple of examples. If you go onto our classification search, if you think of the types of goods and services that you offer to others for example, if you have a coffee shop and you sell coffee, you may want to register coffee shop services. And in that case you would select class 43, which offers coffee shop services.

If for example, you make coffee and you sell the beans to others, then you may want to register the coffee beans as a good, and so you would apply for class 30 in this example. And then if you actually jump onto our trade mark search, you'll see that if you just type the word coffee, it may fall across a different number of our classes. As you can see in class seven, we offer electrical coffee grinder goods, and in class 21, coffee cups. So basically you need to identify what is it that you sell to others, what is your brand known for? And that way, that will help you narrow down what it is, what goods and services are that you want to register your trade mark for.

We have a little case study here. Say you are the Managing Director of Sillis Plumbing, you provide commercial and residential plumbing services. Out of the following list, what goods and services should you apply for? With the plumbing services, you wouldn't apply for water taps, you don't make uniforms, so you wouldn't apply for uniforms. You don't necessarily provide advertising services for others, you may advertise your own services, but that's not something that you provide for others. And you don't provide website design services. So for those of you that selected class 37, plumbing is the only service that you would provide and so that's the service that you want to register your trade mark for.

And as you can see by selecting just the service that you want to use your trade mark on, can save you a lot of money. In this case, that would be a saving of $1320. This could fall for different examples. So if for example you had painting services, class 37 has house painting services, but you wouldn't apply for paints which are listed in class 2. If you did however manufacture paints and you sold that to other people, then you may consider class 2 as an option for yourself. Similarly, if you are a commercial baker, in class 30, we have the manufacture of baked goods for sale, but in class 43, we have providing food. So depending on whether you make the goods or whether you sell the goods, you may want to choose between those two.

We're going to move onto some of the considerations that our trade mark examiners make when looking at trade mark applications. One of those considerations is Section 44 of the Trade Marks Act. Section 44 deals with trade marks which conflict with those already filed with the office. If a trade mark examiner identifies problems with a trade mark under Section 44, it means the applied for trade mark is considered similar to that or at least one other trade mark on the register.

Having a look at Hisense again, you can see that the trade marks do not have to be identical to be considered similar. Whilst the S and the C are changed, the overall look and sound of the marks is similar and consumers and traders would be confused in the relevant marketplace.

What to do. The first question to ask yourself is, is there already a registered trade mark that is the same or similar on our register? To do that, you can start by doing an online search of the industry. You can jump onto Australian Trade Mark Search and you can also search WIPO's brand database. With WIPO's brand database, we do provide more information in our trade mark webinar 201, and also we offer Trade Mark Assist. So Trade Mark Assist is a very good way just to start your initial search.

Before naming your business or investing in your current business name, you just want to do a basic internet search. See if that name already exists. If something comes up with your name, don't worry. If there are any other industries or classes that have registered this name, they may be able to coexist together. Searching Australian Trade Mark Search, will help you understand what is registered as a trade mark and in what classification. To access the search engine at home, just type Australian Trade Mark Search. It should be one of the first results that comes up.

Please remember that something doesn't have to be identical to be considered similar, as with the Hisense example that we've covered earlier. And it's important to note that searching the register and not finding the same or similar trade mark or the same name to yours, isn't a guarantee that your mark can be registered. However, depending on the industry, maybe they can coexist. As you can see on the example on the slide, we have Dove for soaps and cosmetic goods, and then we have Dove selling chocolate. So even though these two names are identical, they are in different industries, and so they can coexist together.

One of the next considerations that a trade mark examiner will look at is whether a trade mark is descriptive. So Section 41. Section 41 of the Trade Marks Act deals with whether or not a trade mark is capable of distinguishing your goods and services from the goods and services of other people. If a trade mark examiner identifies problems with a trade mark under Section 41, it means the applied for trade mark is considered to lack capacity to distinguish. This means that the mark is unlikely to act as a badge of origin for your business or an indicator of a trade source.

If your trade mark is a descriptive word or phrase or sometimes even a picture, the other traders may need to use it in the course of their business and that might stand as a barrier to registration. Some of the best trade marks are either made up words like Kodak, for example, or words that have nothing to do with their products. You need to consider if another trader in your industry would want to use your trade mark to describe their goods or services. Some examples that we have here include organic baby shampoo, so these words describe the product. The words finest meals indicate the quality of the goods. The words Australian made describe where the goods come from. And the word green indicates environmentally friendly or of course a colour.

It's important to note that a word does not need to be completely new or invented. It can have meaning, but must maintain its capacity to distinguish as opposed to describe the goods and services. Whilst the word Apple is descriptive of a type of fruit, it is not descriptive of computers. And so within the context of certain goods, different words are capable of being distinctive.

In the instance of a fruit trader or even a juice bar manufacturer, the trader would find barriers in their registration because the word Apple is a descriptive term that other traders in the fruit or juice bar industry may wish to use. In the instance of Apple Inc, the company has been able to register Apple as their trade mark because the tech world would have no reason to use Apple as a descriptive term in trade.

Some other considerations that we look at includes Section 39, prescribed and prohibited signs. So Section 39 of the Trade Marks Act, deals with marks which may be rejected if they contain or consist of a sign that is prescribed in the regulations or it is a sign so nearly resembling the prescribed sign. There are six types of signs prescribed in the regulations which are detailed in the examples on the screen. The main ones we see come up a lot in applications are the copyright and registered symbols. Ensure that these symbols are not included in the representation of your trade mark that you supply in your application.

Another consideration is Section 42, scandalous signs and use contrary to law. Section 42 of the Trade Marks Act has two parts. Section 42(A) deals with signs where use would be contrary to law. Examples of where a trade mark application would be rejected under this section include:

  • the use of the word Bank, due to the Banking Act,
  • the use of the word Anzac, due to the protection of the word Anzac Act,
  • the use of the red cross or something so nearly resembling it. This is one that comes up quite often in applications. If your logo contains something that looks like the red cross, a plus symbol for example, you may face some issues.

There are ways to overcome this barrier to acceptance, so please have a chat with us after the webinar if you do have questions.

Section 42(B) deals with signs which may be rejected if they contain or consist of scandalous matter. This may include words, symbols or signs that may be offensive, things like swear words, tragic events or culturally insensitive terms or images. Taking the example of the ‘thumbs-down’ Jesus on the screen, this would be an issue as typically trade marks that deride a religion will be considered scandalous. So in this particular case, the presence of Jesus, a figure of extreme importance to the Christian faith, alongside the image in the trade mark is likely to cause offense to persons of Christian faith. The image of a thumbs down is ubiquitous in social media and generally considered an indication of disapproval or dislike. The use of this image with the word Jesus connotes disapproval or dislike towards the religion and it would likely face barriers to acceptance.

So in summary, to choose a unique brand, don't simply describe your goods or services. Ask yourself the question, does this indicate something about the product I have created or my services? Some description is okay, but it needs to be something unique. Two or more descriptive terms together don't necessarily make it a brand. An image or a word and image combination, is generally easier to register and you need to ensure that your trade mark doesn't contain any prohibited or scandalous material.

So now we come to the application options. What application process is best for your business? By now, we've covered all of the considerations you need to make before applying for your trade mark. The next step is choosing how you will lodge your trade mark application. When considering a trade mark, it is important to know the types of applications that you can lodge. At IP Australia we have standard applications. This means that when you apply, your trade mark is published on the public register and you're given a filing date. If your application is accepted, this is the date from which your registered rights will be considered protected.

The next option we have is the Trade mark Headstart applications. Under this process you apply and your trade mark is not published. You receive a preliminary assessment within five days of lodging your application, which tells you whether the trade mark meets the requirements under the Trade Marks Act. If it does and you choose to proceed, you have to pay a fee and convert the application into a standard application, which then gives you that filing priority date.

We also have international applications. So Australian trade mark owners have two choices if they want to register overseas. The first choice is they can apply directly in each office and the second choice is that a single international application using the Madrid Protocol can be submitted. The Madrid Protocol is a treaty that provides international registration of a trade mark. It is administered by the International Bureau of WIPO in Geneva. It facilitates filing of trade mark applications in a number of countries in one application.

To apply with the Madrid Protocol from Australia, you must have an Australian trade mark application that is the same as the international one. You can apply using the Madrid Protocol using the E-Filing System, which is a paperless application and communication platform. WIPO uses E-Filing to communicate any irregularities to participating offices, and in turn, these offices can track and transmit this information directly to users and applicants securely through the E-Filing platform.

If your Australian application is unsuccessful, all international applications via the Madrid Protocol will be invalid. It's also important to note that there are strict timeframes, so you need to consider that you need to apply via the Madrid Protocol system within six months of applying for your trade mark in Australia.

IP Australia offers education around intellectual property, including information on our website, webinars, public engagement activities, and our new Upskill program.

With our Upskill program, you'll learn:

  • what intellectual property is and how to know what type of intellectual property you have
  • why you would protect your intellectual property, and how much it's worth
  • who can apply for a trade mark
  • how to protect your intellectual property online
  • how to conduct a search to ensure that there are no existing trade marks like yours
  • what to consider if you're planning on expanding overseas
  • what to consider when employing staff and contractors for your business
  • tips for protecting your intellectual property in the workplace
  • and how to create an E-services account and apply for a trade mark.

So here at IP Australia, we try and help in many different ways. We have a series of webinars that you can watch at anytime, all you have to do is jump onto our GoToStage channel and search for IP Australia, and all of our webinars will come up there, and also feel free to ask any questions. As the webinar is going on, feel free to call us and email us. We also have what's called Trade Mark Assist. So if you jump onto our website and you search for Trade Mark Assist, this can help you get started. It just covers the basics of searching, goods and services, and you can play around with different words, see if they come up on our register, and that's a really easy way just to get going with whether you want to consider applying for a trade mark.

And finally, we're here to help, so feel free to contact us. We have our customer service number listed on the screen. Jump onto our Facebook, our Twitter, LinkedIn, YouTube, we want to engage, so feel free to call us at any time.

Florence:           

Thank you Natalia for your presentation today. That brings us to the end of the webinar. As Natalia has said, if you have any more questions, feel free to send it to email at communication@ipaustralia.gov.au.

Last updated: 
Friday, February 21, 2020