Trade Marks

Trade Marks

A trade mark distinguishes the goods and services of one trader from those of another. It is a right granted for a letter, number, word, phrase, sound, smell, shape, logo, picture and/or aspect of packaging. You may also register a color or a combination of colors in limited circumstances. However, you must be able to demonstrate that the color or colors have become distinct to your products or services.

There are 34 classes for products and 11 classes for services. Each class has various sub classes. You can seek protection in the specific industries where your mark will be used.

Because a Trade Mark cannot look or sound similar it is worth trying to combine aspects of your brand that you want to protect. For example a name and a logo together would protect both elements as nothing can look or sound similar to either of them. If the name is registered alone it may not provide adequate protection for the logo and vice versa. Registering the two individually may simply just provide an unnecessary expense.

Importance of a Trade Mark

A Trade Mark is your brand. It is what comes to mind when people think of your business or the product/service that you offer. It distinguishes your business from others. With the right communications, it can even take over the actual name of the product that it describes. Some examples include the “Stanley Knife”, “Kleenex” and “Hoover”.

Companies invest a lot of money into their Trade Marks. It is this intangible property that often makes up a significant portion of a company’s balance sheet.

Without a Trade Mark, it is much harder and more expensive to take action against others using your Mark. Unless you regularly read the Trade Mark Journal you may never know that someone else has registered your Mark. This may not come to your attention until you receive a letter from the new registrant telling you to stop using the Mark.

If your Mark is registered by someone else and you never lodged an opposition with IP Australia during the examination process, the time, cost and effort in overturning that decision will be immense.

Essentially, if you have a business – if you have something that identifies you – Trade Mark it and protect it.

Trade Mark v Business/Company Name

A lot of people see the importance in a business or a company name; for a business, this is a statutory requirement. On the other hand, people often overlook Trade Marks as there is no statutory requirement to obtain them.

Once a Trade Mark is registered, no one else can register or use a Mark that looks or sounds similar. If someone uses your Mark in the same class that it is registered, you can write to them and tell them to cease and desist using the mark.

If someone uses a Mark that looks or sounds similar to your registered Mark, you can take action against them. You can seek damages from them for passing off and breach of Sec 44 of the Trade Marks Act.

Under Sec 44 of the Act you do not have to prove that you have a reputation in the marketplace, simply that you have the registered Mark.

With a Trade Mark you do not have to prove that you have a reputation in the marketplace. Without a Trade Mark you would have to establish your reputation – this is often difficult, time consuming and expensive.

Never rely on a business or company name alone to provide you with any protection from others using the name. Only a Trade Mark can properly do this.

Applying for a Trade Mark

IP Australia is the federal government department that assess and grants the rights to a Trade Mark. While this is an online process, it is not straight forward and is best suited to those who are familiar with the site and the application process.

It is important to thoroughly check the prior art base of Trade Marks to ensure that your Trade Mark does not look or sound similar to another. An experienced Lawyer can advise you on the likelihood of your Trade Mark being accepted or declined by IP Australia.

If your Trade Mark is accepted, it is advertised in the Trade Marks Journal. Therefore, people are informed of your Trade Mark acceptance and have an opportunity to oppose it. If there are no oppositions after three months, is it then registered.

If your Trade Mark is rejected, IP Australia will inform you of similar Trade Marks. Where you have used the unregistered Mark for a while, you may be able to appeal the decision with IP Australia. You must show that your Mark has operated honestly and concurrently with the other Mark before and after the other Mark was registered with IP Australia.

Trade Mark Oppositions

IP Australia handle the opposition of Trade Marks.  In this process, parties will give reasons for the acceptance or rejection of the Trade Mark. The Opponent will make their submission, to which the Applicant can respond. The Opponent will then have an opportunity to respond to the Applicant’s response.

Either party can elect for an oral hearing once they have made their submissions. This involves both sides presenting submissions and arguments orally and in person to the Trade Marks Examiner.

Parties can only appeal the Examiner’s final decision through the Federal Court.

If you want to oppose an application, or if your Trade Mark is opposed, it is important that you seek legal advice.

Click here for a 2015 judgement whereby we successfully defended the opposition for a Trade Mark.

Trade Mark Infringements

Trade Mark Infringements occur where another uses a Mark that looks/sounds similar to yours within the same or a similar Class of goods/services.

The first step to stop an infringement is to send a cease and desist letter to the infringer, stating that you are the registered owner of a similar Mark, that they are infringing your rights by using their Mark and that they must cease using their Mark.

Where you suffer little damages and the infringer ceases using the Mark, the issue should resolve. Where the infringement is severe or continues to occur, an action in the Federal Court or Federal Circuit Court may be required.

If the infringing is significant and the Infringer will not cease, there may be a requirement to make an ex parte (the other side not present) interlocutory (prior to an actual hearing) application to the Court to direct the Infringer to cease using the Mark.

You would then take action for passing off through misleading and deceptive conduct. It must be shown that a reasonable person would be confused about the source of the Mark. You must also show that the Infringer knew of and sought to capatalise on your Mark and reputation.

You may be awarded damages or an account of profits to compensate for your losses if you establish this. An account of profits is the amount made by the Infringer through using your Mark.

Ex Parte applications need to be carefully considered due to their cost. The additional costs of losses suffered by the Infringer must also be considered. You will be requested to pay these costs if the Court finds that they never actually infringed your Trade Mark. The Court is also likely to request compensation for the cost of requesting the Infringer to cease using the Mark.

Trade Mark Costs

Application Starting from $460.00 Inc GST and IP Australia costs for words and logos in 1 class
Registration IP Australia cost of $300.00 per class for 10 years
Opposition Whether you are opposing or defending, opposition costs will vary due to complexities
Infringement The same applies as in Opposition

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