They appear to be everywhere we look, but what really is a trademark and what is the benefit of having one registered?
A trademark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
So what is a ‘sign’? According to the Trade Marks Act, it is “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.”
It would of course be wrong to think of just any sign as being a trademark. Here are some examples of signs which are NOT trademarks:
For a sign to be a trademark it must be used in the course of a business or commercial activity and its purpose must be to distinguish goods or services of that business with the goods or services of another business.
A trademark is given some protection under the common law, in particular by the legal principles of misrepresentation and ‘passing off’. In other words, an owner of a trademark can take action against another to prevent the other from using the owner’s trademark (or one that misrepresents it as being affiliated with it) and to seek damages for its unauthorised use.
However, relying on the common law can at times be like relying on the word of a used car salesman (he will often mean well but should not be taken at face value). For example, in cases where a particular trademark has had limited exposure in the marketplace, it may be difficult to prove that someone using a similar trademark in a different locality (or even the same marketplace) has infringed its use. This is particularly the case where the trademark has not gained a reputation in the geographical area in which it is being used.
It may also be difficult to satisfy a court that an alleged infringing trademark has or will cause the public to think that it is associated or affiliated with another trademark.
Aside from the potential evidentiary problems, the cost of trying to enforce a trademark through the courts can, and usually will, be quite expensive. In international cases, it may not be even possible to enforce a trademark in another country unless it is registered in that other country and that other country is a signatory to the relevant international treaty.
In Australia, the Trade Marks Act provides for a system of registration of trademarks with IP Australia. The successful registration of a trademark gives protection to the owner of the trademark for at least 10 years and can be renewed for subsequent 10 year periods indefinitely, provided the trademark is not deemed to be ‘inactive’.
By registering a trademark, its owner has the exclusive right to use the trademark or authorise others to use it under licence. It also entitles the registered owner to sell or transfer the trademark.
Registration precludes, or at least gives the right to oppose, the registration of a subsequent trademark which may be substantially identical or deceptively similar. A trademark is taken to be ‘deceptively similar’ to an already registered trademark if it so nearly resembles that trademark that it is likely to deceive or cause confusion in the minds of the public.
The owner of a registered trademark is also entitled to take action against the owner of an infringing trademark which is substantially identical to or deceptively similar to a registered trademark in relation to goods or services in respect of which the trademark is registered. A registered trademark can be infringed even if the infringing trademark is used in conjunction with different goods and services as the registered trademark. This is provided that the registered trademark is well known in Australia, the use of the infringing trademark is substantially identical to or deceptively similar to the registered trademark and will be likely to be taken to have a connection to it and the interests of the registered owner are likely to be adversely affected.
The unauthorised use of a registered trademark will not always amount to an infringement however. This is generally in the case where the use of a sign (intentionally or unintentionally) as a trademark was, for example, used in good faith or inadvertently or for a coincidental purpose; for example, to describe the kind or quality of particular goods or services.
Registration of a trademark is nonetheless highly recommended for those businesses that have developed a distinct sign or logo which is intended for long term use or which has already gained a reputation in the marketplace.
Prior to undertaking registration of the trademark, it is worthwhile undertaking a free trademark search to see if there are same or similar trademarks already registered in Australia. For international searches, an intellectual property lawyer should be consulted.
It is also possible to have a pre-application examination at a lower fee before you file a formal application. This is particularly useful when you are not certain whether the trademark will be approved. If it is, then you can move onto formal registration; if not, then you will have saved some money in having a formal application rejected and can look at making modifications to ensure it will pass examination. Please note however that even a trademark which receives preliminary approval may still be the subject of opposition proceedings by another person once the trademark is published during the registration process.
Whether you intend to register a trademark or oppose or take action against another who you believe is infringing your trademark, you should seek legal advice first.