Protecting your trade mark

12 October 2020

Your business is making some serious cash – or it’s about to.

Customers are raving about what you do – or they’re about to.

You know a strong and recognisable trade mark can communicate to customers what they’re going to get from you: what you do; the quality of your work; and all the hard work and investment behind the scenes to deliver what your customers love.

But how do you protect your trade mark?

How do you stop others from using something similar to your trade mark to sell their own products and services?

Registering your trade mark is a great first step.

Why register my trade mark?

A trade mark registration allows you to more easily stop (and recover compensation from) third parties such as competitors, who try to wrongly trade off your trade mark’s reputation in the market. Registering your trade mark (instead of relying on the common-law action of passing off, or statutory prohibitions on misleading and deceptive conduct) means you do not need to prove:

  • that your trade mark has a reputation in Australia;
  • a likelihood of actual deception by the third party;
  • that you have suffered loss or damage; or
  • that the third party has been misleading or deceptive.

If you have a trade mark registration, all you need to prove is that a third party is using a mark that is substantially identical or deceptively similar to yours.

The other more complicated matters can (if necessary) be deferred to a later time after you’ve gained the upper-hand with your trade mark registration.

Additionally, the rights of a trade mark registration owner can discourage third parties from seeking to rip off your trade mark in the first place.

I have a registered business or domain name – can I stop reading?

No! A registered business name, company name, or domain name, permits you to trade using that name – they do not protect you against third parties who trade using the same or similar name.

What should I think about before registration?

There are four important things to think about before registering your trade mark:

  1. Does your trade mark meet the requirements for registration? If the trade mark is descriptive of your goods or services (i.e. not, or only partially, ‘inherently adapted to distinguish’), then you won’t be able to register it.  For example – if other traders might need to use your name to describe their goods (e.g. Paddington Café), then it won’t be registerable. You may be able to register it if it’s partially ‘inherently adapted to distinguish’ and there’s sufficient evidence of use/reputation in the relevant market.
  2. What classes will you register the trade mark for? The registration will only protect you in respect of the classes you register in. There are lots of different classes, all with numerous categories of goods and services.
  3. Are there similar marks already the subject of an application or registration, in respect of classes that are closely related to your goods/services?
  4. Are there similar marks that are not registered as trade marks, but whose owners might have grounds to object to your trade mark registration, or claim you have infringed their rights, because they have acquired usage rights/a reputation in their trade mark?

What are the benefits of a ‘pre-filing investigation’?

It’s a good idea to undertake, or have a legal professional undertake, a ‘pre-filing investigation’ which involves:

  • an assessment of whether your trade mark meets the requirements for registration, and what classes you might register your trade mark in respect of; and
  • searches of the ‘Trade Marks Register’ and general internet searches using Google and some popular social media channels.

A ‘pre-filing investigation’ of those important things will mitigate the risk of:

  • you using a trade mark that’s not distinctive – even if it is registered, it may be difficult to enforce;
  • weak brand protection;
  • your application conflicting with earlier trade mark applications or registrations;
  • your application being refused during examination;
  • your application being opposed by a third party;
  • having to compile (at significant cost) ‘evidence of use’ to overcome a refusal or opposition.

If you’ve already started using your trade mark, the ‘pre-filing investigation’ will also help identify any third parties that might have pre-existing rights against you for infringing their mark. These third parties could stop you from using your trade mark and/or or force you to pay them your profits or destroy your goods.

If you haven’t started using your trade mark, then the ‘pre-filing investigation’ can identify whether it’s better to change your trade mark, before you significantly invest into marketing and expanding your operations.

How do I apply to register my trade mark?

There are two ways of applying to register your trade mark:

  1. TM Headstart application. The fees for this application are initially cheaper. The key benefit to this application is that IP Australia will give you an initial assessment of whether the trade mark is registerable or if there are any earlier conflicting trade mark applications or registrations that may prevent registration. This means you will be warned about any potential registration issues. If it’s a favourable assessment, you can easily progress with the application. If not,, you can take steps to address IP Australia’s concerns (e.g. change the classes, amend the mark, or file a new application).
  2. A Standard application. The application is more expensive and any response from IP Australia must be addressed, or the application lapses. As the name suggests, this is simply an application to IP Australia to register a mark, which will either be accepted or refused based on IP Australia’s registration criteria. You will have an opportunity to dispute/address that refusal.

We usually recommend a TM Headstart application as it is cheaper at the start, and can give you an initial idea of whether or not IP Australia feels the trade mark should be registered or not.

Who should own the trade mark?

You should always ensure ownership of the trade mark and any intellectual property rights that subsist in the trade mark (e.g. copyright in an image logo), have been properly assigned to the correct entity.  For example:

  • if you contracted a designer to make your logo, all intellectual property rights in that logo should be assigned to you by written agreement (and before the logo becomes super valuable and the designer can extort you!); and
  • corporate groups should ensure the correct entity owns the intellectual property rights, and that if any other entities actually use the trade mark, appropriate written licence agreements are put in place. If not, the trade mark registration could be removed for non-use, or rights that accrue by usage may be lost. See our earlier article on this here.

A few more things

Sounds, colours and smells can all be registered as trade marks too!

If you want to protect your trade marks outside of Australia there are some additional steps you need to take, and you should seek advice from a legal professional. If you have plans to operate in jurisdictions outside of Australia, you might consider applying for trade marks in those jurisdictions before you apply in Australia. If you don’t do this, ‘trade mark squatters’ could file applications of your marks in those other jurisdictions first, and extract a hefty ransom from you.

You, or your legal professionals, should monitor the market after registration to ensure your rights are not being infringed, and take steps promptly if they are. This, among other things, will help to protect you against ‘dodgy’ traders, and ensure other traders don’t accrue their rights by extensive use over time.

What do I do now?

If you’d like to register your trade mark, just let us know – we’d love to help!