Trade Marks

What can be a trade mark?

A trade mark is a right over a letter, number, word, phrase, sound, smell, shape, logo, picture and/or aspect of packaging. A trade mark is often distinct in the sense of having a particular design or typography in the words, numbers or phrases it uses.

Benefits of registering a trade mark

You do not need to register a trade mark to use it, however there are benefits, including:

• the exclusive right to use your registered trade mark as a brand name for the goods or services specified in the registration;
• the exclusive right to authorise other people to use your registered trade mark for the goods or services specified in the registration
• the right to sell your trade mark, in the same way as any other item of personal property;
• registration covering the whole of Australia; and
• the right to prevent importation of goods carrying your trade mark, including the option of giving the Australian Customs Service a notice objecting to the importation of goods carrying your trade mark.

Unregistered trade marks

There are still rights that attach to unregistered trade marks. There are protections at common law, and under the Competition and Consumer Act 2010, and state fair trading legislation. This may include misleading or deceptive conduct by another party who seeks to use your unregistered trade mark to represent themselves as being connected with your business.

The ® and ™ symbols

You cannot use the ® symbol unless you have a registered trade mark. It is an offence to do so. However, you can use the ™ symbol with an unregistered trade mark.

How long does a trade mark last?

Trade marks last for 10 years with initial registration. There is a fee for application, and also a fee for renewal of the trade mark for successive periods of 10 years. The trade mark must be actively used, otherwise your rights may not be enforced as the trade mark can be removed on the grounds of non-use.

How to Register a Trade Mark

Before registering a trade mark, it is important to search the trade mark database ATMOSS to make sure you are attempting to register something original. The Telstra ‘T’ symbol or the QANTAS kangaroo, are examples of trade marks. These help to identify the business and distinguish it from other providers.

Applications for registration of trade marks are made to the Trade Marks Office of IP Australia. An application must be in the prescribed form which is available from the Trade Marks Office. The application must include a representation of the trade mark sufficient to identify it.

The trade marks register is split into 34 different classes of goods and eight different classes of services for administration purposes. In the application for registration, an applicant is required to select one or more classes of goods and/or services to which the trade mark relates. The application fee increases with each additional class nominated.

The applicant must describe the goods and/or services to which the trade mark relates. It is not enough simply to refer to the class description, for example by the words ‘all goods’ or ‘all services. The applicant must clearly describe the goods and/or services more specifically.

The description of the goods or services is important because the Registrar of Trade Marks uses this description together with the representation of the trade mark to determine whether the trade mark is registrable. Trade marks are only registrable if they are ‘used or intended to be used to distinguish the applicant’s goods or services…’ The description of goods or services is also used in determining whether or not there has been infringement of the trade mark.

IP Australia provides advice and access on trade marks and the application process.

Fees

Details of fees for trade mark applications and processes associated with trade marks are available on the IP Australia website.