Table of Contents
- 1. A Trade Mark’s Entire Purpose is to Stop Others From Using It
- 2. Registering my Trade Mark Means I Can Stop Anyone From Using It
- 3. Trade Marks Protect Your Business Ideas
- 4. I Can Get Worldwide Protection With My Trade Mark
- 5. Registering a Trade Mark is the Same as Registering a Business Name
- Key Takeaways
- Frequently Asked Questions
Trade mark registration is a valuable business asset which provides the owner with the exclusive right to use and stop others from using the mark. Most people are familiar with trade marks and the ™ or ® symbols attached to business names and logos. Beyond this, the details become hazy partly because of the different intellectual property laws and terminology used across the world. Even different jurisdictions regulate the use of ™ or ® regarding trademarks.
Business owners should inform themselves about trade marks and leverage their understanding to grow and add value to their business. Misconceptions about trade marks, on the other hand, can lead to an ineffective intellectual property strategy and unnecessary hurdles and costs to overcome along the way. This article sets out to dispel five common misconceptions below.
1. A Trade Mark’s Entire Purpose is to Stop Others From Using It
Contrary to popular belief, a trade mark’s sole purpose is not to prevent others from using the term (although this is an effect of registration in appropriate circumstances), but rather to distinguish your goods and services from another trader’s. Your trade mark is a ‘badge of origin’. Understanding this distinction is important when it comes to choosing a business name or product name. Many people who consider the purpose of the trade mark solely to stop others from using it may find it difficult to register the trade mark.
Recognising the purpose of using a distinctive trade mark will help you become more creative with your business names. The more unique the name is, the more likely IP Australia is to approve your application.
2. Registering my Trade Mark Means I Can Stop Anyone From Using It
There are two parts to this misconception that require clarification. Firstly, trade mark protection does not extend to everyone and secondly, it does not extend to any use of the trade mark. You register trade marks under specific classes to indicate the associated goods or services. If you use trade marks for goods or services outside of the registered classes, this is often not considered infringement.
Additionally, the Trade Marks Act 1995 (Cth) defines the use of your name or logo as a trade mark as an infringement. This is true not just for general use of a descriptive term. If another business is using the same or similar mark as yours to identify their goods or services, it may constitute infringement. If they are using a common term in a more descriptive way, it may not be trade mark use and, therefore, not infringement of a registered trade mark. It’s important to distinguish between reference to a trade mark and descriptive or common use.
After you register your trade mark, you can take steps to prevent others from using a trade mark that is identical, very similar, or misleadingly similar to yours. To prove a case of infringement, you need to show the following:
- the infringing mark was used as a trade mark;
- the infringing trade mark is very similar or misleadingly similar to your registered trade mark; and
- the goods or services linked to the infringing trade mark are the same, similar, or closely related to those covered by your trade mark.
3. Trade Marks Protect Your Business Ideas
There are traditional businesses, and there are those built on a method or principle that is new and unusual for the industry. It makes sense to want to protect the idea and to get the appropriate recognition.
Here is where people confuse different types of intellectual property protection. The four main IP rights are trade marks, copyright, patent and design registration. The overall rule is that there is no protection for an idea – only the expression of the idea. Copyright, patents and design registration protect the different types of expression of these ideas.
In Australia, businesses do not need to register copyright because it automatically applies to original works such as music or paintings. You can obtain patents for inventions or processes that are new and functional, while designs are registered for the appearance of new products.
Trade marks are used for branding, including business names, product names, logos, or taglines. Non-traditional trade marks include shapes like Toblerone’s triangular prism chocolate, colours such as Cadbury’s purple, or sounds like Darth Vader’s breathing. These do not protect the business idea, but you can use them to link your brand with a specific business method.
As we’ve seen above, the purpose of the trade mark is to distinguish the goods or services. If a business has come up with a new way of doing things, an easy way to ensure they get credit for their creativity is to invest in their brand and trade mark protection.
4. I Can Get Worldwide Protection With My Trade Mark
A ‘global trade mark’ does not exist. Trade marks are a matter of national jurisdiction meaning you must apply to each country for registration. So, your mark may be available in Australia but not the United Kingdom. Notably, if your mark is not available in another jurisdiction, you may be infringing by operating your business in that country.
In general, trade marks are subject to the regulations of individual national laws. The eligibility for registration and the extent of protection vary from one country to another.
There there are two avenues for registering a trade mark in multiple nations, through either the Madrid Protocol or direct applications in each specific country as needed.
5. Registering a Trade Mark is the Same as Registering a Business Name
The Australian Business Register allows you to register a business name for your business. It will not allow two businesses to register the same name. Registering the name, however, does not give the business the exclusive right to use the name as a trade mark.
Your registered business name is primarily utilised by the government for tax and administrative purposes. It is important to note that this registration does not confer exclusive rights for using the name as a trade mark, essentially serving as a distinctive identifier for your business.
The registration process with ASIC/ABN ensures that your chosen name does not directly conflict with others, but it does not guarantee legal rights if another entity was already using the name and has either a registered trade mark or a proven market reputation.
While the incorporation process includes checking proposed business names against existing business names, it’s essential to be aware that both registered and unregistered trade marks, not covered in this examination, may also pose obstacles to adopting your business name as a trade mark. Therefore, it is crucial to consider the broader legal landscape beyond the incorporation checks, as a pre-existing business with legal rights could potentially prevent your use of the name.
It is only through registering your trade mark that you have an exclusive proprietary right to the business name. If you have the business name registered but no trade mark, you have a limited right to stop another party from using the name.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Get your trade mark facts straight. A comprehensive understanding of how trade marks work will greatly benefit your business. It will help you form a strong trade mark portfolio and strategy.
If you need assistance with registering your trade mark or monitoring infringement, our experienced trade marks lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
The primary purpose of a trade mark is to distinguish your goods and services from another trader’s. It acts as a ‘badge of origin’ rather than solely stopping others from using the term.
No, registering a trade mark does not give you worldwide protection. Trade marks are a matter of national jurisdiction, meaning you must apply for registration in each country where you seek protection.
We appreciate your feedback – your submission has been successfully received.
