A Trade Mark is a sign used to distinguish goods and services provided in the course of trade by a person, from goods or services so provided by another person.
Some of the best known Australian Trade Marks include, the Qantas flying kangaroo, ABC ‘Lissajous curve’, Pure Wool mark, Sydney 2000 Olympic Games, Commonwealth Bank, SBS, Australia Post and the “Australian Made, Australian Grown” logo – the green triangle with a golden kangaroo.
A registered Trade Mark can protect one of your business’s most valuable assets and gives your business an exclusive legal right to use your branding in relation to your goods and services. It is property and can be licenced, sold or gifted like any other property. A Trade Mark can be a word, number, letter, phrase, shape, logo, aspect of packaging, sound, smell, colour, or a combination of any of these.
Classes of Goods and Services
A Trade Mark is registered in one or more of classes of goods and services. Australia uses the international Nice Classification where there are a total of 45 classes, 34 classes for goods and 11 classes for services.
Some examples of goods include:
• class 1 – Chemicals used in industry science and photography;
• class 7 – Machines and machine tools: motors and engines; and
• class 25 – clothing, footwear, head gear.
Some examples of services classes include:
• class 35 – Advertising, business management;
• class 40 – treatment of materials; and
• class 44 – medical services, veterinary services …
Careful consideration should be given to which classes a Trade Mark is registered as each class registration is an additional cost.
Registration
Trade Marks are registered by submitting an application to IP Australia. This registration provides the owner with protection throughout the Commonwealth of Australia. Overseas protection is obtained by separate overseas applications or a single international application through IP Australia.
A Trade Mark does not expire as long as the registration is renewed. The initial registration is for 10 years and subsequent 10 year renewals are available by paying a fee. If a Trade Mark is not used for more than three years, a third party can apply to IP Australia to have it removed from the Register for non-use. A registered Trade Mark owner is allowed to use the symbol ® against their mark.
There are restrictions on what can be registered. Everyday language, common descriptive words and phrases are not registerable. Some geographical names, common surnames and common trade symbols that other trades would use in their everyday business activity are difficult to register. The use of some words is restricted from Trade Mark by legislation.
Certification Trade Mark
A Certification Trade Mark is a different type of Trade Mark that is not owned by an individual trader but an association of traders. A Certification Trade Mark usually indicates that the goods and services of a trader are certified to a standard of the association who owns the Trade mark. Two very common certification Trade marks are the “Quality Certified Product” and “Quality Endorsed Company” owned by SAI Global.
Geographical Indications
Trade Marks that indicate that goods and services originate from a specific; area, region or location which is well known for particular characteristics or quality are called Geographical Indications. A well known Geographical Indication is Champagne which indicates that a wine carrying that mark comes from a particular wine making location in France, using a particular production process.
Unregistered Trademarks
Registration is not mandatory in order to acquire a Trade Mark. A Trade Mark can be acquired by use in trade and the owner can rely on the common law of passing off and, competition and consumer law, to protect their business. Common law actions are usually expensive, difficult to establish your rights and takes a considerable time to run. An unregistered Trade Mark can only use the ™ symbol.
There are no IP Police who identify infringement of your Trade Mark. It is your responsibility to continually check the marketplace to see if other traders are using your Trade Mark. There may be other traders using a Trade Mark that is sufficiently similar to yours that makes your customers think that they are buying your product or service. Infringement action may be available to you to protect business.
If you are thinking of registering a Trade mark or your business currently uses a Trade Mark that is not registered, please don’t hesitate to contact us to discuss your situation.
