IP Information - Trade Marks
A trade mark is a sign which distinguishes one trader's goods or services from those of other traders. A trade mark can take the form of a word, phrase, letter, number, logo, picture, shape, sound, scent, an aspect of packaging, or any combination of these. In Australia trade mark registration is not compulsory, however protection provides an easier and more cost effective system of enforcing trade mark rights than is available to owners of unregistered trade marks.
Criteria for Registrability
For a trade mark to be registered there are a number of criteria that must be fulfilled. Amongst other things the trade mark must be able to distinguish the goods or services of one trader from those of other traders. In general for a trade mark to distinguish the goods or services it must not:
- consist of words which are descriptive of the goods or services;
- consist of words which are laudatory of the goods or services;
- consist of words which are in common usage in the trade;
- consist of common surnames or well known geographical names.
Furthermore, the trade mark must not be substantially identical or deceptively similar to a registered or pending trade mark. This is why it is imperative to undertake a trade mark search before filing an application. A search can identify any potentially conflicting marks and an assessment of possible difficulties can be made prior to lodgement of the application.
Examination of a trade mark application occurs around four to six months after filing. However, examination can be expedited under certain circumstances, such as the applicant is about to invest substantial capital into the trade mark. If the Examiner accepts the application the trade mark is advertised and third parties are given a period of two months to oppose the registration. Providing no objections are received the application proceeds to registration, on condition that the registration fee is paid. If the application is not accepted then the Examiner will issue a report detailing the objections. A period of fifteen months from the date of issuance of the first Examiner's report is provided in which time any objection must be overcome. If the objections raised by the Examiner are overcome then the application can proceed to acceptance. Alternatively if these objections are not overcome then the application will lapse.
A trade mark registration entitles the owner to use of the ® symbol on goods and services for which the trade mark is registered. The ® symbol informs other parties of the owner's exclusive rights to use the trade mark and it acts to deter third parties from engaging in activities which would infringe these trade mark rights. When a registered trade mark is infringed, the trade mark owner may obtain legal relief to stop the infringement and claim damages. Furthermore, trade mark registration also provides a defence against trade mark infringement proceedings brought about by the owner of other registered trade marks.
The registration of a trade mark means that the registered owner has exclusive rights to use or licence the trade mark throughout Australia. A registered trade mark can be sold with or without goodwill attached, therefore making it a valuable business asset and bargaining tool. In contrast unregistered trade marks can only be sold with goodwill attached. Once registration has been gained the exclusive rights to use the trade mark are perpetual, on the proviso that renewal fees are paid every 10 years.
Trade mark registration is available in a number of countries and in many of those countries the Australian filing date may be retained if foreign applications are filed within 6 months from the Australian filing date.
Trade Mark Application