Trade marks are used to distinguish the goods or services of a trader from those of others traders and must be registered to provide rights under the Trade Marks Act 1995 (Cwlth). The owner of a registered trade mark has the exclusive right to use the trade mark for the goods and services for which it is registered.

A registered trade mark can protect words, symbols, letters, numbers, names, signatures, phrases, sounds, smells, shapes and aspects of packaging, or a combination of these items. If your trade mark is made up of a combination of items, your trade mark registration will only protect the trade mark as a whole. It will not provide protection against another party using one item without the others.

Registration of a business name does not create any enforceable rights in the name, nor does it entitle the business owner to use the name as a trade mark without the risk of infringing the rights of others.

Trade marks are valuable assets as they may be registered for an unlimited number of 10 year terms, provided the renewal fees are paid. However, like most registered IP rights, a registered trade mark can be revoked. For example, if you do not continue to use your trade mark, and have not used it for a period of 3 years, a competitor can apply to have your mark removed from the register.

Benefits of registering a trade mark

Trade mark registration provides you with certainty and a clear statutory framework for enforcement. You are not required to prove that the trade mark has an established reputation.

An Australian trade mark registration covers the whole of Australia. Trade marks can also be registered in other countries on a country by country basis. Initial registration lasts for 10 years, and can be extended at 10-year intervals.

A registered trade mark can assist in preserving a business's advantage and developing strong brand loyalty. It prevents others from registering similar trade marks in the categories in which you operate.

Once you own a trade mark, you have the right to sell or license it to others, which you cannot do with an unregistered trade mark.

Trade marks can be used to supplement the protection provided by other types of IP with shorter terms. If a patented product, a registered design or a new plant variety is commercially successful, the value of the trade mark used in marketing the product may outlast other IP rights – when the other IP rights expire, anyone can exploit the IP but consumers may still prefer to buy products with the original brand.

Registration of a trade mark is not essential. In some cases it is possible to protect unregistered trade marks by relying on common law rights, such as 'passing off', and protection against misrepresentation under Australian legislation.

Trade mark notification

Once a trade mark has been registered you should use the symbol '®' to notify others that it is a registered mark, or 'TM' or 'TM application pending' for applications that are still to be examined, as appropriate.

Applying for a trade mark

There are 3 things to consider when deciding whether to apply for a trade mark:

• Is there a valid and defensible reason to use and register this trade mark?
• Does this mark infringe any other trade mark currently registered or in use within Australia?
• Is the trade mark capable of achieving registration?

A trade mark application can take over 20 months after filing to be fully registered with IP Australia. The process can be shorter for straightforward applications. However, the process can be longer where issues arise with registration eligibility or where a third party opposes registration.

It is not necessary to wait for registration of a trade mark before using it. However, the success of your application is not guaranteed and until the trade mark is actually registered, it cannot be enforced as a registered trade mark.

Also consider...

• Visit IP Australia for information on trade marks. Topics include: about trade marks; the application process; search for a trade mark; request a TM Headstart; apply for a trade mark; renew your trade mark; pay your trade mark registration fee; payments for existing TM Headstart applications; and opposition to registration.
• Visit the Institute of Patent and Trade Mark Attorneys of Australia – a representative body for Australian patent and trade mark attorneys. This site provides the latest news and resource information about patent and trade mark law in Australia.

When applying to register a trade mark, you need to search existing registered marks to determine whether:

• the trade mark is distinctive enough to allow registration
• the trade mark conflicts with any pre-existing registered marks, or applications, for the same kinds of goods or services as your product or service.

Once the application is accepted, it is advertised in the Australian Official Journal of Trade Marks, and interested parties are given the opportunity to oppose registration on certain specified grounds, for a period of 3 months. In the absence of any opposition, the mark is registered upon payment of the registration fee.

Requirements for registration

To be registrable, your trade mark must meet 2 major requirements:

1. No conflict with existing trade marks

Your trade mark must not conflict with pre-existing registered (or unregistered) trade marks.

You will not be able to register a trade mark that is identical or deceptively similar to another trader's registered trade mark if the goods and services are also similar. Having 2 similar trade marks for similar products could confuse customers and could lead to the other trader demanding that you cease use and taking legal action against you if you do not.

To help ensure that your trade mark does not conflict with a registered mark, you should search for registered or pending trade marks associated with similar goods or services.

You should also do preliminary searches to help ensure that your trade mark does not conflict with any similar names or marks being used by other traders, even if they are not registered as trade marks. A simple scan of the internet may reveal evidence of potential conflicts. The owners of unregistered trade marks may oppose the registration process for your mark, or in some circumstances even take legal action under the common law of 'passing off'.

2. Sufficiently distinctive

Your trade mark must be sufficiently distinctive and not be just a descriptive term ordinarily applied to the goods or services, or a mark that other traders would, in the ordinary course of trade, need to use.

Distinctiveness can be inherent or acquired. Inherent distinctiveness is the natural and unique appearance of your trade mark. Distinctiveness of a trade mark can also be acquired through use in the market place; for example, if you have used the trade mark extensively prior to filing for registration, your trade mark may already distinguish the designated goods or services as being those of your business. If you can establish this, your trade mark will be seen as sufficiently distinctive and registration will be granted.

Trade marks that are sufficiently distinctive and unlikely to be used by other traders include:

• invented or 'concocted' words such as 'Kodak'. Note that simply putting 2 known words together to form a new word does not necessarily constitute an 'invented' word. For example, 'goodbuy' would not be considered an invented word
• suggestive or emotive words such as 'Lucky strike' for matches
• words that are not descriptive of the goods and services, such as 'Picnic' for clothing.

Registration costs

The fee structure for registering a trade mark mostly depends on the number of classes under which your goods or services are categorised. Most of the fees will be a multiple of the number of classes.

There are a number of other fees that apply to other actions that may be required in relation to your trade mark application. Visit IP Australia for a full list of these fees and the methods of payment.

Legal fees for advising on trade mark issues, preparing applications and progressing a trade mark application to registration are additional to any fees payable to IP Australia and should be considered before seeking advice.

IP Australia offers an online service called TM Headstart that can help you determine the suitability of your proposed trade mark for registration. This service can help you identify any barriers that may prevent you from registering your proposed trade mark.

Trade mark classes

Each trade mark is registered in relation to a range of goods and services. The Trade Marks Act 1995 (Cwlth), following the Nice international classification system, defines 34 classes of goods and 11 classes of services. Read the full list of classes on the IP Australia website.

You need to decide under which class(es) you wish to protect your trade mark. This requires identifying all goods and services in relation to which the mark will be used, and matching them to the defined classes. It is then necessary to prepare a specification describing your particular subset of goods and services within the class. It is not acceptable to simply specify 'All (goods/services) in this class'.

There are particular conventions for describing goods and services. Assistance can be found through the use of the classification search on the IP Australia website, or by obtaining trade mark attorney advice.

A registered trade mark only provides protection against use of that mark by others in relation to the goods and services covered by the registration or similar goods and services.

Some words or phrases cannot be trade marked

There are a number of words or phrases that would be difficult to trade mark. These include the types of marks that other traders are very likely to use. Used alone, these words or phrases would be difficult to register as trade marks:

• descriptive words or phrases that denote the kind, quality, intended purpose or value of the goods or services (e.g. the phrase 'the best apples')
• generic terms such as 'classic' that other businesses need to use
• short combinations of numbers or letters, such as L-55 or FS, as these types of marks may be used by other traders as serial numbers or initials. Common acronyms or abbreviations such as 'LED' would also be difficult to register
• common surnames or geographic locations. While it is very difficult to register a geographic name or a common surname, someone who has used one extensively for a considerable period of time in promoting particular goods or services may be able to achieve registration via acquired distinctiveness (e.g. Smith's Crisps).

Some words are protected by law and cannot be registered as trade marks. Some are prohibited as trade marks under the Trade Marks Act 1995 (Cwlth) (e.g. 'Olympic Champion'). The use of certain words can be affected by other legislation, such as the legislation specific to the wine industry and description of its wines.

Where the words on their own are difficult to register as a trade mark, registration can often be achieved by combining these words with distinctive words or symbols to make what is known as a 'composite mark'. For example, a company called 'Brisbane Automotive Mechanics' would have trouble registering its business name as a trade mark, as it only consists of descriptive and geographic terms. However, by accompanying the phrase with a unique feature, such as a cartoon animal, the trade mark as a whole becomes much more inherently distinctive, and, as it is unlikely that another trader would legitimately need to use that phrase in conjunction with the particular cartoon animal chosen, the trade mark becomes much easier to register. However, an ordinary photograph of a car engine would not have the same degree of distinctiveness.

It's important to note that registration of a composite mark only protects the combination as a whole. In the example above, the registered mark could not be used to stop another trader from using a name similar to 'Brisbane Automotive Mechanics' if the trader uses it without the cartoon.

Also consider...

• Visit IP Australia for information on trade marks and other services to assist with trade mark applications. Topics include: about trade marks; the application process; search for a trade mark; request a TM Headstart; apply for a trade mark; renew your trade mark; pay your trade mark registration fee; payments for existing TM Headstart applications; and opposition to registration.
• Visit the Institute of Patent and Trade Mark Attorneys of Australia – a representative body for Australian patent and trade mark attorneys. This site provides the latest news and resource information about patent and trade mark law in Australia.

Unauthorised use of a sign that is substantially identical with, or deceptively similar to, a registered trade mark, is an infringement. A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles the other trade mark that it is likely to deceive or cause confusion.

Occasionally, a 'well-known' registered mark can be infringed by the use of a similar mark on dissimilar goods or services, as the mark could indicate an apparent connection between the unrelated goods or services and the registered owner of the trade mark. This adversely affects the interests of the registered owner. For example, using 'Coca-Cola' as a trade mark in relation to sweets could infringe the legitimate 'Coca-Cola' trade mark even if it was only registered in relation to beverages.

Infringement of non-registered trade marks

When infringement of a non-registered trade mark occurs, the owner may be able to take action under the common law to stop the infringement. Common law, trade practices and fair trading legislation provide remedies against people attempting to benefit from the reputation of another business by making unauthorised use of a confusingly similar trade mark on the same type of goods, or engaging in misleading or deceptive conduct. This includes the act of 'passing off' under the common law, a classic example being the offering of a product for sale using marketing similar to that of an established brand, such as 'Pine Action' air freshener with a container and label similar to 'Pine o cleen'.

Taking action under the common law, and legislation such as the Competition and Consumer Act 2010 (Cwlth), requires the trade mark owner to prove that they have developed a reputation in the unregistered trade mark and that use of the infringing mark would be likely to confuse or deceive the public. This can be very difficult and expensive to prove. It is not necessary to prove any reputation or deception in order to enforce a registered trade mark.

Also consider...

• Visit IP Australia for information on trade marks. Topics include: about trade marks; the application process; search for a trade mark; request a TM Headstart; apply for a trade mark; renew your trade mark; pay your trade mark registration fee; payments for existing TM Headstart applications; and opposition to registration.
• Visit the Institute of Patent and Trade Mark Attorneys of Australia – a representative body for Australian patent and trade mark attorneys. This site provides the latest news and resource information about patent and trade mark law in Australia.