What is a Trademark?

A trademark refers to any ‘sign’ such as a word, phrase, symbol, image, shape, sound, smell, colour or combination of things that identifies and differentiates the goods or services of one trader from the similar goods or services of other traders.  A registered trademark gives the owner rights to use the trademark as registered (and also to authorise others in the use of that trademark) and the right to take legal action against anyone infringing upon it.

Trademark kinds can be anything from names and logos, to things less conventional such as shapes, images, sounds, aspects of packaging or colours. Although it’s highly unusual to trademark scents (smells) it is possible under Australian law, as long as it’s used to identify and differentiate the goods or services of the trader in question.  Registered trademarks are treated as personal property and can be purchased, sold or licensed to third parties.

What is the Purpose of a Registered Trademark?

In short, the primary purpose is protection; to prevent confusion occurring between the use of similar ‘signs’ by different businesses. A registered trademark provides the owner of the trademark rights to use that mark in respect of the goods/services nominated, as well as providing them the right to license the use of the trademark for those goods/services to third parties. It also provides the registered owner opportunities to seek relief from and take action in the event of another party using the same or confusingly similar trademark in the marketplace without permission from the trademark owner. Trademark protection lasts for a decade and can be renewed indefinitely, if renewed on time every 10 years.

One purpose of trademark protection is to prevent confusion in the marketplace. This could be innocent or it could be through a dishonest competitor trying to use identical or similar marks to sell their own services or goods.  Without registration in place for your trademarks it can be difficult, if not impossible, to prevent the use of similar brands in the marketplace thus leading to possible loss of sales to another party, or, a damaged reputation if another party uses your brand in a way that is inferior to your own use.

Which Trademarks are Eligible for Registration?

Providing it meets the minimum eligibility categories, almost anything can be registered as a trademark so long as it meets that key definition of being a sign used to distinguish your goods or services from the similar goods or services of other traders.  You might choose to trademark a word or a group of words, letters or numbers.

It’s also possible to trademark a shape, symbol, graphic, music, a sound, colour or scent to differentiate your goods or services.

Adding to these eligibilities are the categories of different types of marks:

• Certification Marks: Marks awarded to products or services which comply with a defined set of standards, but are not members of the same group are classed as certification marks. They can be granted to any trader that can demonstrate that their products meet with established qualifications (think for example the National Heart Foundation ‘tick’ of approval logo, which is used by third parties who have sought authorisation and met the rules/standards of use);

• Collective Marks: These are marks owned by associations whose members use the marks to identify themselves with an established level of quality and any other requirements set as the association’s standards. For example, accountants, engineers, or architects can all be members of associations bearing collective marks.

• Defensive Marks: Usually used by well-known brands. A standard trademark requires an intention to use the trademark for the goods/services nominated and may be vulnerable to removal if not used. A defensive mark (which needs to already exist as a registered trademark) does not require intent to use, rather it allows trademark owners to file a mark for closely related goods/services – where it’s likely a connection would be drawn between the standard trademark and goods/services of the defensive application, to provide some protection against use of similar marks by others for related activities.

How to Register a Trademark

To begin the trademark registration you should first conduct a trademark search which will inform you as to the possibility of marks the same as or similar to yours.  On identifying these marks and rectifying the necessary changes, you then file an application with IP Australia.  You will need to stipulate the goods or services to be covered by your trademark.

Typically, to register a trademark the following should be considered:

• It cannot be the same as, or similar to, a mark already owned by another trader (unless there are relevant circumstances allowing your co-existing registration);
• It must not contain elements of offence or scandal or be contrary to law
• The mark must be distinctive, so that it acts as a ‘badge of origin’ for your goods or services
• It must not mislead or otherwise deceive consumers or be deceptive

Protecting your Trademark

Trademark registration can be acquired in most countries around the world. Trademark registration is managed in each national or regional office.  Each Office will also maintain a register (database) that captures all the relevant application information including the trademark, the goods/services, the owner and the history. Some Offices will also publish copies of any correspondence relating to that trademark. Consider applying for your trademark overseas if you trade your goods or services outside of Australia, and, please contact us for a quote.

Australian registration is governed by IP Australia, and the decisions on whether your trademark is eligible for registration in Australia is largely within the Registrar’s power to determine in Australia.

In Australia a registered trademark is valid for 10 years and can be renewed indefinitely each decade.  To maintain protection of your trademark it’s important that the registered owner actually uses that trademark in connection with the goods and/or services of the registration – failing to do so may result it being removed from the register for ‘non-use’ should another person apply for removal on that basis.

You will also need to be diligent in ensuring that no other party is trying register any similar marks as your own and that others are not making use of your trademark or something deceptively similar in the marketplace. If you do learn of any other party attempting to register a trademark that is similar, or using one you feel is too similar to your registered trademark please get in touch.

A trademark professional can aid you in getting a better understanding of trademarks and their purpose. In addition, if you are seeking to protect your mark with registration, speak to one of our experts at Mark My Words about conducting trademark searches and filing your application to give your trademark the best chance at achieving registration.