A trade mark is a sign that distinguishes your business from your competitors. It may be a name, an image or a slogan that is associated with your brand. For this reason, a trade mark is an asset and requires protection. In Australia, there are two types of trade mark: registered and unregistered. This article outlines how each can be enforced to protect your brand.

Registered Trade Marks

Only a trade mark that is registered with IP Australia can use the ® sign. A registered trade mark is awarded where the name:

  • is unique and distinctive;
  • does not simply describe the products or services with which it is associated; and
  • is not confusingly similar to another registered trade mark.

Registration provides the owner with the exclusive right to use their mark and prevent others from using identical or similar signs. Your registered trade mark will appear on the Trade Mark Register once you receive confirmation of registration from IP Australia. You can then enforce the trade mark against anyone who infringes on it.

Unregistered Trade Marks

An unregistered trade mark has been used to such an extent that it is recognised and clearly distinguished from others. In some circumstances, the law will prevent others from using the same or similar trade mark through the action of passing off.

Passing off happens when someone misrepresents that their goods or services are associated with another business. To prove ownership of an unregistered trade mark, three essential factors need to be established:

  1. the owner of unregistered trade mark must prove that their mark has a reputation in connection with the goods or services with which it is used;
  2. that someone is deceptively passing off his goods or services as those of the original owner; and
  3. this misrepresentation has resulted in damage to the owner’s reputation.

Weighing Up Your Options

For most businesses, the safest way to protect your mark is to register a trade mark with IP Australia, especially if your business is in its infancy. Passing off provides a safety net of protection for those businesses who have unregistered trade marks and have an established reputation. However, unregistered trade marks are more difficult to enforce.

Ask three questions if you are deciding whether or not to have a registered trade mark.

  1. Do you have the resources and network to develop a strong reputation within the industry?
  2. Are you able to prove this reputation?
  3. Have you had a look on the Trade Mark Register to see if there are any identical or similar names already registered?

It may not be essential to register a trade mark if you answered yes to each question.

However, registered trade marks are always easier to enforce than unregistered trade marks. This also means that the costs of enforcing a registered trade mark are much lower than those of an unregistered trade mark. Therefore, it is almost always a good idea to register your trade mark.

Key Takeaways

Your trade mark can be your most valuable marketing tool. It can entice customers with its professional look, it can deter others from copying your mark and it is an asset that can be licensed, sold or traded. Being able to use the ® symbol and having your name on the Trade Mark Register for everyone to see is an easy way to prove what is rightfully yours.

If you need assistance protecting your brand, call LegalVision’s IP lawyers on 1300 544 755 or fill out the form on this page.

Alexandra Shaw
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