TRADE MARKS PROTECTING THE REPUTATION OF YOUR BUSINESS

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1 ALERT: TRADE MARKS PROTECTING THE REPUTATION OF YOUR BUSINESS What is a Trade Mark? A trade mark is a sign used to distinguish your unique goods or services from those of other businesses. Sometimes called a brand, your trade mark is the way you identify your goods or services to your customers and is therefore a very valuable commercial asset for any business. The more successful your business, the more valuable the trade mark becomes. The effective defence and enforcement of trade mark rights is fundamental to the protection of the goodwill and reputation of your business. A trade mark is a right granted for a letter, number, word, phrase, name, signature, sound, scent, shape, colour, logo, picture, symbol, aspect of packaging or a combination of these signs. Famous examples are the word Coca-Cola and the Nike swoosh symbol. A registered trade mark gives you the exclusive right to commercially use, licence or sell the sign in association with the goods or services it is registered under. A person who owns a trade mark in Australia has the legal right to stop other people/businesses from using the same or a similar sign in Australia. TYPES OF TRADE MARKS Trade marks can be either common law or registered signs. A common law trade mark is an unregistered sign which has been used in relation to certain goods or services to such an extent as to be recognised as distinguishing those goods or services from the goods or services of another business. Even though such a sign is not registered, in certain circumstances the law will prevent other businesses using the same or similar signs in a way which is considered unfair. Under the common law, passing off means to wrongfully appropriate someone else s business reputation, and this is against the law. In addition, to engage in conduct that is misleading or deceptive or is likely to mislead or deceive members of the public is an offence under the Competition and Consumer Act 2010 (Cth). Such laws may provide protection against use of an unregistered trade mark by another business if it can been shown that the sign has been used by the relevant business for a sufficient

2 period and has built a reputation upon that sign. The symbol can be used with an unregistered trade mark at any time. A registered trade mark is a sign registered under the Trade Marks Act 1995 (Cth) (the Act) and is commonly designated by the symbol. The Act confers strong and legally enforceable rights upon trade mark owners against other people/businesses who may seek to use or register the same or a similar sign in respect of the same or similar goods or services. Unlike a business, company or domain name, a registered trade mark gives you a proprietary right in that sign. As the owner of a registered trade mark you: have the exclusive right to use the registered trade mark as a brand name for the goods or services specified in the registration; have the exclusive right to authorize other people to use your registered trade mark for the goods or services specified in the registration; have personal property in the trade mark that can be easily bought, sold, mortgaged and licensed; have a registration that is national and is on the public record so that third parties who search the register are more likely to be deterred from adopting it or a similar sign; may give the Australian Customs Service a notice objecting to the importation of goods that infringe your registered trade mark; are in a stronger position to stop other people from using your trade mark as their brand name on the same or similar goods or services; and have a complete defence to any claim of trade mark infringement brought by another trade mark owner. Trade mark registration provides a simple, reliable and cost-effective mechanism for Australia-wide enforceable rights without having to rely upon proof of substantial reputation in the marketplace as is required to support common law trade mark usage. Equivalent registration is available in most countries if you seek protection of the sign globally.

3 SELECTING A TRADE MARK When selecting a trade mark it is important to choose a sign that: is both distinctive and unique to your business; is not directly descriptive of the goods or services (for example, a car manufacturer cannot trade mark the word manufacturer ); is easy to say and spell (if a word or phrase); is not defamatory or misleading, scandalous or contrary to law; is not a geographical description or a common surname; and is not substantially identical or deceptively similar to any existing trade mark, whether registered or common law, and used for the same or similar goods or services. The strongest signs are often those that include or comprise a distinguishing logo or symbol. A trade mark that includes a word or element that is common on the Australian Trade Marks Register (the Register) in relation to similar goods or services will be less distinctive and thus more difficult to protect. That is not to say that a trade mark that lacks distinctiveness cannot be registered. An objection to registration can be overcome with evidence of use of the sign in the market place. This demonstrates that consumers identify with the trade mark as a result of use of that sign over a long period of time. The sort of evidence required may include examples of publicity and promotional materials used over the years, copies of annual reports, screen captures from the company website and advertising and sales figures. Prior to using and applying to register a trade mark, it is important to conduct a search of the sign s availability and registrability through the Register and to check all relevant common law indices including the Australian Electoral Commission database of common surnames, generic pharmaceutical names indexes, telephone directories, business names, domain names and the Internet. Such a search will indicate whether there are other deceptively similar or substantially identical trade marks that may prevent the use or registration of the proposed sign for the goods or services of interest. A full availability and registrability

4 search is recommended as it can save a business proprietor substantial time and money. For example, thousands of dollars may be wasted in branding merchandise and packaging and undertaking advertising of your goods or services only to find another business has the rights to a particular trade mark and can take action against your business for trade mark infringement. In addition, if an application for registration of a trade mark is submitted without first checking the Register, time and money may be incurred in overcoming an objection to that application from the Trade Mark Office or a third party. Trade mark attorneys and intellectual property lawyers can undertake searches on your behalf. APPLYING FOR A TRADE MARK Trade marks are formerly registered under the Act through IP Australia A trade mark application is submitted to IP Australia who will examine the application to see if it meets legislative requirements. You may also wish to apply for trade mark protection overseas. Any legally recognized entity (including an individual, company or partnership) can apply to register a trade mark. However, the applicant must own the sign and any copyright in the artwork that makes up the sign and must intend to use it. Trade marks can only be registered in respect of specific categories of goods and services (there are 45 classes of goods and services), and thus a business should only seek trade mark registration for those categories of goods or services that it intends to use the sign in relation to. It is important that the Statement of Goods and Services in your application is drafted so as not to be too narrow, which will limit the protection provided by the registered trade mark, and so as not to be too broad, which may make your application or registration vulnerable for non-use of the sign. For a fee of $120 per class of goods or services, IP Australia offers the TM Headstart service to provide an early assessment of the likely acceptance of your proposed trade mark Within five days of submitting an online application, IP Australia will inform you of the likelihood your trade mark will be registered. As you have not yet applied for registration, changes to your trade mark are able to be made. You have five days to decide if you wish to

5 proceed with your application for a trade mark, whereby a reduced application fee of $80 per class of goods or services will apply. It is important to know that once you submit your trade mark application and its information has been published, you cannot substantially change the details of your trade mark or add classes of goods or services. You can submit a trade mark application online or in hard copy. The online application fee is $120 or $200 per class depending on whether or not you use IP Australia s Goods and Services Pick List. The hard copy application fee is $200 per class. Trade mark applications are examined approximately three to four months after submission. If an objection is raised by an examiner (for example, an objection to the descriptiveness of a term in the sign), 15 months is granted to allow the applicant to overcome the objection/s. If all objections are overcome, the application will proceed to acceptance and is advertised in the Official Journal of Trade Marks. A period of three months is allowed for third party objections to be filed. If no opposition is filed, the application will proceed to registration. The registration fee is $300 per class. Once your trade mark is registered and all fees are paid, the sign will be enforceable. Initial registration of the trade mark is for ten years and is renewable every ten years indefinitely. Renewal of the registration of your trade mark is $300 for electronic renewal or $350 for hard copy renewal. USING YOUR TRADE MARK It is important to use your trade mark exactly as it is represented on your Trade Mark Certificate. If you registered a word or phrase, it can be used in any form or font, however if you registered a particular logo or words in a specific stylized font or form, you must use them only as registered. If not used in Australia for a specific period, trade marks can be removed from the Register. Use your trade mark consistently and use the or symbols. As mentioned above, you can deal with a registered trade mark by selling, mortgaging or permitting others to use it (licencing). Any assignment of your trade mark rights to another party must be formally recorded on the Register. There should also be a written licence if you allow another party to use your registered sign.

6 Once you trade mark is registered, you can take action to prevent third parties from adopting or using the same or similar trade mark and to obtain compensation for unauthorised use or infringement from that time. To be successful in an infringement action it is necessary to show that: the infringing trade mark was used as a trade mark, meaning the infringing sign was used to indicate a connection, in the course of trade, between certain goods or services and the infringing business; the infringing trade mark is identical, substantially identical or deceptively similar to your registered trade mark; and the goods or services in relation to which the infringing trade mark was used are the same, similar or closely related to the goods or services for which your trade mark is registered. It is a defence to trade mark infringement if the infringing party can show the sign had been in use since a date prior to the date the trade mark registration application was filed for your business. In addition to a claim of infringement under the Act, you may also have an action at common law for passing off or for misleading or deceptive conduct under the Competition and Consumer Act 2010 (Cth), as mentioned above. These claims are harder to establish than an infringement under the Act as they require proof that your sign has developed a reputation in the market place. For more information regarding trade marks, please visit the IP Australia website If you would like to discuss any aspect of the matter, please contact us CONTACT Kim Valenti Principal (08) kim.valenti@valentilawyers.com.au This Alert provides a summary of the subject matter covered. It does not render any legal advice. You should first obtain professional legal advice prior to taking any action on the basis of any information contained in this Alert. This article is copyright. For permission to reproduce this article please Kim Valenti: kim.valenti@valentilawyers.com.au Liability limited by a scheme approved under Professional Standards Legislation.