A trade mark is a way of identifying a unique product or service. A good trade mark distinguishes your business from other traders.
Sometimes referred to as a brand, it can help your customers discern the quality of your product or service over that of your opposition.
A trade mark is not just ‘a logo’.
It can be a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or combination of these.
A trade mark is not a business name nor company or domain name
A common misconception is that a trade mark is the same thing as a business name, company name, domain name or even a design. It is not.
An example of this is well-illustrated by the story behind the Australian web-based business SourceBottle.
Founded by Bec Derrington in order to connect journalists with potential sources, she explained to IP Australia: 'When I first started I thought registering my domain name would be enough, but I soon realised that would not protect me if someone else wanted to use the name SourceBottle®. All I'd done was ensure they just couldn't use the same domain address. This meant I needed to register the trade mark for my business, SourceBottle®. I used a trade mark attorney to manage the process, who was able to determine the right classes under which to register the mark.'
Soon after Derrington launched the business nationally she realised she wanted to expand it globally. But she discovered that a martial arts studio owned the 'sourcebottle.com' domain name (she had sourcebottle.com.au). Thankfully, they had not sought to register the trade mark in any international markets, so she could register the trade mark internationally without any opposition, and managed to buy the 'sourcebottle.com' domain from the studio as well.
We do not issue company or business names. That is done by the Australian Securities and Investments Commission (ASIC).
Domain names are issued by private Internet companies and registered by the .au Domain Administration.
A trade mark is not a design
Intellectual property (IP) rights for a design are different to a trade mark.
One of the key differences is that a design needs to be unique or new to be registered and a trade mark does not.
Also, a design refers specifically to the new visual features of shape, configuration, pattern or ornamentation of a product.
A trade mark is more of a brand package.
It can be as simple as a word, combination of words, or words and a graphic, or many other combinations.
Examples of trade marks include:
the phrase/word ‘The Airpocket’
the flying red kangaroo on the tail of Qantas planes.
Examples of designs include:
the new shape of the seat on an ergonomic chair
The new visual features of a Breville juicer
You must use your trade mark or it can be removed for non-use
You must actively use your trade mark in the course of trade. If you do not, it can be removed on the grounds of non-use.
Anyone may apply for removal of a trade mark for non-use.
We provide this course of action to discourage people or companies from unfairly registering multiple trade marks simply to stop other traders from using them.
The use it or lose it approach to trade marks is one good reason to keep your details with us up-to-date. If your trade mark is officially opposed by someone, we will send you a notice and you can defend your trade mark's removal.
An example of being challenged over non-use of a trade mark is illustrated by the challenges faced by Australian business Metisc and its owner Graham Hill.
Specialising in software that helped clients to register and record sports scores, as well as manage competitions and fixtures, Metisc had trade marked the term iScore.
In 2009, Metisc was advised that an international gaming company intended to use a similar trade mark to iScore 'because Metisc wasn't using it anymore'.
That was not true and so the Australian company briefed its lawyers.
‘We still had clients using iScore, so I briefed my lawyers. But we didn’t really have a huge problem with the gaming company using the similar name given they worked in a separate area,’ Graham said.
His legal team came up with a win-win solution. ‘They had trade marked the name i-Score in the US and Canada, and we had obtained the registered trade mark in Australia. So we came up with a plan under which we would allow them to use it in Australia as long as we had reciprocal rights to it in other jurisdictions,’ he explains. It was a satisfactory solution for both parties.
Life of a trade mark
Your trade mark registration lasts for ten years from its filing date.
You can renew your trade mark registration between 12 months before the renewal is due, or up to six months after. You will need to pay extra fees if you renew after the due date.
We will send you a renewal reminder, so it is important that you let us know in writing of any address changes.
Matters can arise in the process of applying for a trade mark requiring you to act to protect your trade mark. These events are explained in depth for trade mark oppositions.
However, a few of the key time events of which you may want to be aware at the beginning of your trade mark application are explained below.
Once you have submitted your trade mark application, depending upon the complexity of the research involved, the trade mark examiners at IP Australia can take up to three to four months to assess whether your application meets requirements under the Trade Mark Act 1995.
You should be aware that while your trade mark is protected from your application filing date, the actual registration of your trade mark in the Australian Trade Mark Search can take up to seven-and-a-half months, especially if the examination work required on your case is complex.
Once your application has been examined, and you receive notice that your application for registration has been accepted, you must pay due registration fees within six months, or your application may lapse.
Registration fees are not applicable to Trade Mark applications lodged on or after 10 October 2016.
If you receive advice from the examiners that they require more information in order to progress your application, you must address these issues within 15 months of the examiner’s report being sent to you.
As explained, your trade mark has a registration life of 10 years. This can be extended by renewing your trade mark. You can do this one year out from your trade mark expiry date, or within a goodwill period of six months after it lapses.
There is no legal requirement to register a trade mark in order to use it.
However, if someone else has already registered the same trade mark as yours, they can take legal action against you if you infringe their IP rights. If you need to protect your trade mark we can help.
Please understand that we are not a legal body and therefore do not help in legal action to enforce your rights. This is the job of Australia’s legal professionals – particularly those lawyers and attorneys who specialise in IP.
We do deal with parties who may oppose your trade mark registration. This is not the same as helping you legally prosecute possible infringements of your IP once it has been registered and is out in the marketplace.
Trade marks aren't just brand names or logos
Companies can register other distinctive features that distinguish their goods from those of other brands. For example:
- Bettina Liano and Levis have registered the distinctive pocket stitching on their denim garments as trade marks
- Burberry has registered its check pattern as a trade mark
- Prada has registered the red stripe on the heel part of its shoe sole as a trade mark.
The first registered trade mark
On 2 July 1906, the first day the then-Commonwealth Trade Marks Act 1905 came into operation, more than 750 applications were lodged.
PEPS, a product for coughs colds and bronchitis, became the first federally registered trade mark in Australia. It was registered by Charles Edward Fulford of the Peps Pastille Co from Leeds in England.
As advertised in a 1907 newspaper PEPS were 'a wonderful breathing medicine in soluble tablet form'. 'PEPS cure coughs and colds by making the cough easy, natural and painless and by destroying the germs. You simply take a little PEP from its silver paper wrapping and let it dissolve on the tongue, or crush it between the teeth. This releases the pine essences imprisoned in the tablet, and immediately the naval cavities, the throat, the lungs and bronchial tubes are filled with the healing breath of the rich pine woods'.
The PEPS trade mark, that was used to distinguish their brand, was a rounded rectangle designed for the top of a tin. The shape contained the word ‘PEPs’ along with a descriptive blurb that read ‘for coughs, colds & bronchitis.’ The tin also included instructions that read ‘one pastille as required. See book for more full directions. Keep lid closed’. An illustration of a pine forest was also included. This pine forest was included in the logo to reflect one of the key ingredients in the cough drops - the pine extract.
Brief history of trade marks
On 2 July 1906, the day the first Federal enactment of the then Trade Marks Act 1905, the Trade Marks Office began in Melbourne.
While Australian patent law was originally based on the British law system, trade mark law in Australia seems to have been in advance of that of the 'Mother Country'.
Britain's Trade Mark Registration Act came into operation in 1875, while five Australian states already had enacted laws to protect registered trade marks at that time: South Australia 1863; Queensland; Victoria and Tasmania in 1864 and NSW in 1865.
The first Registrar of Trade Marks and Commissioner of Patents was George Townsend. The Melbourne office was later moved to Canberra.
The 1955 Act came into force in 1958, replacing the 1905 Act. During this time annual lodgements increased from 3583 to 10195. Australian trade marks legislation has evolved since that time and today the legislation in force is the Trade Marks Act 1995.
Australia's favourite trade marks
In 2014, IP Australia marked its centenary. A panel of Australian personalities from the worlds of sport, art, business, advertising and fashion were asked to rank the top national trade marks. From their short list, the Australian public were asked to vote to choose Australia's favorite trade mark. The top ten Australian trade marks were as follows: