A trade mark is a way of identifying a unique product or service.
It's a form of brand protection which distinguishes between your products or services and those belonging to your competitors.
A trade mark is not just ‘a logo’.
It can be a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these.
Before applying for a trade mark, you should check to make sure you're eligible.
Purpose of registering a trade mark
A registered trade mark provides you with exclusive rights to use, license and sell the mark. It’s also a valuable marketing tool because the value of your trade mark increases with the success of your business.
Your trade mark, often called a brand, is your identity. It’s the way you show your customers who you are.
It might be your corporate logo, a jingle you use in an advertisement, your business name painted on the side of your truck or your signage or packaging.
A trade mark can also be a:
- word (in a plain font or a ‘fancy’ font)
- aspect of packaging
- or combination of the above...
A trade mark is not a business name, company name or domain name
A common misconception is that a trade mark is the same thing as a business name, company name or domain name. It’s not.
Business and company names
Business names and company names are registered with the Australian Securities and Investments Commission (ASIC). While they’re required to run a business in Australia, they don’t stop others from using the same or similar name.
ASIC Connect allows you to search existing registered business and company names.
We register trade marks to give you the exclusive rights to that mark, which makes it easier for you to take legal action to prevent others from using it. Registered trade mark are different to business, company and domain names (see above and below).
Domain names are issued by private internet companies and registered by the .au Domain Administration. The purpose of a domain name is to secure the web URL only.
Avoiding a costly mistake
Founded by Bec Derrington in order to connect journalists with potential sources, Australian business SourceBottle is a good example of this common misconception. She explained to us: 'When I first started I thought registering my domain name would be enough, but I soon realised that would not protect me if someone else wanted to use the same name. All I'd done was secured the web URL. This meant I needed to register the trade mark for my business, SourceBottle®. I used a trade mark attorney to manage the process, who was able to determine the right classes under which to register the mark.'
Soon after Derrington launched the business nationally she decided to expand globally. But she soon discovered that a martial arts studio owned the 'sourcebottle.com' domain name (she had sourcebottle.com.au). Thankfully, they had not sought to register the trade mark in any international markets, so she could register the trade mark internationally without any opposition. She also managed to buy the 'sourcebottle.com' domain from the studio as well.
A trade mark is not a design
Intellectual property (IP) rights for a design are different to a trade mark.
One of the key differences is that a design needs to be unique or new to be registered and a trade mark does not.
Also, a design refers specifically to the new visual features of shape, configuration, pattern or ornamentation of a product.
Examples of trade marks include:
- the phrase/word ‘The Airpocket’
- the flying red kangaroo on the tail of Qantas planes.
Examples of designs include:
- the new shape of the seat on an ergonomic chair
- the new visual features of a Breville juicer
You must use your trade mark or it can be removed for non-use
You must actively use your trade mark in the course of trade. If you don’t, it can be removed on the grounds of non-use. This is to discourage traders from registering multiple trade marks simply to stop others from using them.
Anyone may apply for removal of a trade mark due to its non-use. The earliest a non-use application can be made is five years after the filing date of the registered trade mark, and you must be able to demonstrate that the trade mark has not been used in the past three years. If a request to remove your trade mark from the register is received, we will send you a notice and you can defend your trade mark's removal.
Metisc specialise in software that helps clients to register and record sports scores, as well as manage competitions and fixtures. An international gaming company advised Metisc that they intended to use a similar trade mark to iScore 'because Metisc wasn't using it anymore'.
That was not true and so the Australian company briefed its lawyers. ‘We still had clients using iScore. But we didn’t really have a huge problem with the gaming company using a similar name given they work in a separate area,’ Graham said.
His legal team came up with a win-win solution. ‘They had trade marked the name i-Score in the US and Canada, and we had obtained the registered trade mark in Australia. So we came up with a plan under which we would allow them to use it in Australia as long as we had reciprocal rights to it in other jurisdictions,’ he explains. It was a satisfactory solution for both parties.
Life of a trade mark
Your trade mark registration lasts for ten years from its filing date.
You can renew your trade mark registration 12 months before your renewal is due, or up to six months after. You will need to pay extra fees if you renew after the due date.
We will send you a renewal reminder, so it is important that you let us know in writing of any address changes.
Matters can arise in the process of applying for a trade mark requiring you to act to protect your trade mark. These events are explained in depth for trade mark oppositions.
It is important to note that you are responsible for enforcing your trade mark. This includes monitoring the marketplace for potential infringement of your trademark.
We are not a legal body and therefore can’t assist with legal action to enforce your rights, or deal with parties who may oppose your trade mark application. This is the job of Australia’s legal professionals – particularly lawyers and attorneys who specialise in IP.
There is no legal requirement to register a trade mark. However, if someone else has already registered the trade mark you intend to use, they can take legal action against you.
Trade marks: how it all began
On 2 July 1906, the Commonwealth Trade Marks Act 1905 came into operation and the Trade Marks Office opened in Melbourne. On that day more than 750 applications were lodged.
While Australia based its patent law on the British law system, South Australia, Queensland, Victoria and Tasmania enacted laws to protect trade marks well before Britain did.
Our legislation has evolved over a hundred years and we now operate under the Trade Marks Act 1995.
It was PEPS, a product for coughs colds and bronchitis, that became the first federally registered trade mark in Australia.
Registered by Charles Edward Fulford, PEPS was advertised as 'a wonderful breathing medicine in soluble tablet form'.
The PEPS trade mark was a rounded rectangle designed for the top of a tin. The shape contained the word ‘PEPs’ along with a descriptive blurb that read ‘for coughs, colds & bronchitis.’
Australia's favourite trade marks
In 2014, IP Australia marked its centenary. A panel of Australian personalities from the worlds of sport, art, business, advertising and fashion were asked to rank the top national trade marks. From their short list, the Australian public were asked to vote to choose Australia's favourite trade mark. The top ten Australian trade marks were as follows: