Trade Mark Basics

Trade Mark Basics

Trade marks enable people to identify your product or service. So they can become powerful and valuable business assets. They communicate the core value of your product or service and foster customer loyalty. Trade mark protection is a business imperative and the best protection is obtained by way of registration. We are experts in the trade mark registration process, assisting entrepreneurs through to large corporates like DuluxGroup.

Trade marks are names, words, logos, aspects of packaging, shapes, colours, scents or combinations of these which distinguish goods or services of one person from those of another.

The main requirement for registration is that the trade mark should be capable of distinguishing goods or services. Marks which are simply descriptive of the goods and services or which consist of commonly used words such as “super” or commonly used logos such as grapes for wine, may be difficult to register. However, if it can be shown  the trade mark has been used to the extent that it does distinguish the goods or services of the applicant, registration may be obtained.

Types of Trade Marks

Standard commercial trade marks are used to distinguish goods or services offered or approved by the trade mark owner from those of others. Most trade marks fall into this category.

Certification trade marks are to show that a certain standard has been attained in relation to quality, accuracy or other characteristics of goods or services. Examples include fair trade and organic product certifications.

Collective trade marks are used in relation to goods or services offered by members of an association.

Defensive trade marks can be registered for well-known trade marks in classes of goods or services in which the owner does not actually intend to use the mark. Defensive marks cannot be removed for non-use and are designed to minimise consumer confusion if a business attempts to use a well-known mark in relation to products or services.

The rights given to Trade Mark owners

A trade mark registration gives its owner the exclusive right to use the mark in relation to particular goods and services. Trade mark owners can stop other people from using substantially identical or deceptively similar trade marks for the same goods or services, even if:

  • the registered mark has no reputation and
  • the unauthorised use is not confusing.

These rights also enable trade mark owners to take action against third party use of a deceptively similar mark in relation to similar goods or closely related services to those for which the mark is registered.

Trade mark registration  is for a ten year period from the date on which the application was filed, renewable upon payment of the official fee.

The advantages of Trade Mark registration

Although it is possible to protect unregistered trade marks, registration of a mark under the Trade Marks Acts in Australia or New Zealand provides a number of advantages, including:

Automatic protection

Without registration you cannot prevent unauthorised use of a mark unless it can be shown that reputation exists in the mark and the unauthorised use is misleading or deceptive. Proving these elements can be a costly and uncertain process.

Nation-wide protection

Registration normally gives rights throughout Australia or New Zealand, even before the trade mark has been used. Rights to trade marks which are not registered are generally limited to the area in which the reputation exists.

Creation of a tangible asset

Registration of a trade mark converts otherwise intangible reputation and goodwill into concrete personal property rights that can be licensed, transferred and sold to others.

Cost effective enforcement

Registration of a trade mark lets third parties know the trade mark is taken; provides a defence to allegations of infringement; facilitates acquisition of registration overseas; can block registration of deceptively similar trade marks by others; becomes a deterrent to adoption of deceptively similar trade mark by others; and increases the prospects of successful resolution of domain name disputes.

Click here to download a detailed information sheet on Trademark protection in Australia and the advantages of registration.