Trade Marks: What You Need to Know as a Business Owner
Q: What is a trade mark?
A: A trade mark has no specific ‘look’. It can be a logo, word, phrase, shape, sound or even a smell.
The one thing all trade marks generally have in common is that they indicate the origin of a product. A trade mark is the reason you would become suspicious if you saw a Rolex watch for sale at a street market; the trade mark carries with it the reputation that the company has spent years establishing and maintaining.
Q: Do I need to register a trademark and how do I do it?
A: Without registering a trade mark, you do not have exclusive rights over its use.
Registration allows you to control who can use the trade mark in relation to a type of product offered by you. This protects the reputation of your product against cheap imitations that might look the same, but perform poorly.
The process of registration is handled by IP Australia (you can find all the information relating to registration on their website). Registration is pretty straight forward, but does involve an application fee.
As part of the application, you are required to nominate one or more ‘classes’ of goods and/or services that your trade mark will be used in relation to. There are 45 different classes to choose from, with each one covering different types of products in different industries.
IP Australia may reject your application if your trade mark is any one of the following:
- too similar to another trade mark already in existence;
- unable to distinguish your product from the product of others (for example, you cannot register the word ‘café’ as a trade mark and then prevent other café’s from using it);
- obscene or offensive.
To make sure your trade mark is not identical or similar to one already in existence, you can conduct an existing trade marks search here: https://search.ipaustralia.gov.au/trademarks/search/quick.
Once your application is approved by IP Australia, it is opened to the public for 2 months, during which another person may ‘oppose’ your application (this is the equivalent of the “speak now or forever hold your peace” line at weddings). If your application is opposed, it will likely be in relation to one of the 3 rules above.
If you do not receive any opposition after the 2-month period, your trade mark will become registered and you will receive the exclusive rights to use it!
Q: My Trade Mark Registration Will Apply Across the Board, Right?
A: Wrong. Your exclusive trade mark rights will most likely only apply in relation to similar goods or services for which you have registered.
For example, if you wanted to register the name of your delicious home-brewed beer as a trade mark, you would do so under class 32 (beers, juices, other non-alcoholic beverages). No one else in Australia would be able to sell beer using your trade marked name, but they may be able to use it on a new line of basketball shoes or oven mitts.
Trade mark protection only extends beyond similar goods or services where the trade mark is so well-known that, even on a foreign product, it would lead a consumer to believe that the origin of the product was the owner of the well-known trade mark. The standard is very high; McDonalds were unsuccessful in preventing the use of the ‘Big Mac’ trade mark on a 2-litre bottle of wine, even though it was also a consumable good.
Q: Do I need to put a ™ or an ® after my trade mark in order to protect it?
A: You don’t, but they help make others aware of your interest in the trade mark.
The ™ can be used even before a trade mark is registered. It will let others know that you claim ownership of the trade mark and intend to protect it. Note that ™ does not confer any additional legal protection on your trade mark.
The ® symbol can only be used if your trade mark is registered, so it carries more authority than the ™. However, it is an offence to use the ® symbol unless your trade mark registration has been approved.
Q: If I trade outside Australia, will it affect my trade mark registration?
A: Yes. The Burger King franchise famously lost the right to open a Burger King store in Australia after failing to extend their trade mark registration down under. A small burger shop called ‘Burger King’ already existed in Australia and Burger King had to think of a new name, ie: Hungry Jacks.
If you plan to sell your product in another country, you will need to obtain trade mark registration in that country. You can either file a separate application in each country, or apply through the World Intellectual Property Organisation and simply list every country you seek registration (however, not all countries are available under this option).
Q: Will my registered internet domain name and business name help protect my trade mark?
A: The short answer is no. Trademarks, business names and domain names are all separate components of your marketing brand, so registering one does not protect the others.
For example, by registering your company logo as a trademark, you prevent competing businesses from attaching that logo to any of their products, but you do not prevent them from using your business name in their website’s URL. You will need to register a domain name to do that. Check out our article on internet domain names for more information.
Similarly, by registering the name of a new product as a domain name, you protect your website but do not prevent others from selling products under the same name.
By Tristan White, Paralegal, Atticus Lawyers and Advisors.
If you would like further information about anything discussed in this article, please contact our office on (03) 8692 7520.