As technology continues to evolve, it has become increasingly important to protect your intellectual property (IP). IP includes a range of valuable commercial assets such as inventions, brands, trade marks, designs, and patents.
We can assist you with a variety of IP advice and IP related services, such as:
- identifying your IP assets
- IP protection and registration
- IP licensing
- what to do if someone is infringing your IP
- managing IP created by your employees during the course of their employment
Trade marks can be protected by registration, a process that is often overlooked by IP owners on the assumption that their registered business or domain name already provides this protection. However, a business that trades under a name and logo but does not register that as a trade mark, may be required to stop using that name and logo if another party registers the same or similar mark. Trade marking not only protects your IP, but also protects you from being sued for the use of a similar trade mark registered by a third party.
What is a trade mark?
A trade mark is a ‘sign’ used to distinguish the goods or services provided by one supplier from those provided by any other. It is a unique way of identifying your business brand, product, or service within the marketplace.
A trade mark may be a name, word, phrase, logo, symbol or image, sound, scent, 3D shape or colour, or a combination of these things that packages the identity of your product or service.
To register a trade mark, it must be sufficiently distinctive. Most generic names, surnames and geographical locations will not usually be registrable. Words or signs that are like other traders of like products or services may also not be accepted. Words considered to be scandalous, or words or phrases that are likely to be misleading, will also be problematic.
Trading and business names, which may otherwise not be considered sufficiently distinctive, may be designed to achieve the uniqueness necessary for registration.
Why should I register a trade mark?
Registration of a business name, company name or domain name does not necessarily protect your brand. Without getting your own trade mark registered, a third party could apply for and be granted registration of your name or mark at any time without you even knowing. They could then ask you to stop trading under your current business name or stop using your logo.
Registration results in the trade mark owner holding certain exclusive rights to use the mark in association with the class of goods or services in which it is registered.
A registered trade mark constitutes personal property which may be sold, assigned, licenced or transferred. The owner may also seek remedies through the court for infringement of the trade mark rights by others.
With a registered trade mark, you will:
- own your brand name, perhaps indefinitely
- have monopoly use of the trade mark in Australia, or other country in which the trade mark is registered
- help ensure that no other entity can trade under the same or similar name for related goods and services
- have ownership and protection for your domain names
- have an asset which can be sold, inherited, transferred, or licenced
- increase the value of your business
- avoid being sued for infringing the Trade Marks Act or ‘passing off’
What is passing off?
The principle of ‘passing off’ prevents others from representing their goods or services as those of another. Another party’s use of your business name could confuse or deceive your customers into thinking the competitor is you or somehow connected to your business. If that has potential to damage your business, you may have an action of ‘passing off’ against that other party.
However, it is also open for another party to make this claim against you. Much will depend on the circumstances. For example, whether the competitor’s business used a similar name before you began using that name. Registration of a trade mark is your best protection against passing off.
Registering your trade mark
Trade mark registration should be considered at the beginning of a business venture or release of a new product. This may avoid the need to re-brand, should a mark identical or similar to the proposed trade mark already be registered.
We recommend you consider registering all elements unique to your branding which may include logos, labels, packaging, and trading names
We can assist with the entire process of registering your trade mark through IP Australia. The process is not be as expensive as you may think. We can help you decide on the relevant categories of registration for your mark, lodge the application on your behalf and deal with any enquiries or objections raised during the examination process. Our experienced lawyers can also assist with a range of other IP matters such as copyright infringement, transfer and licensing agreements.