What is a Trade Mark and Why Register?

If you are a business owner, you likely have a logo, slogan or other distinguishing feature that helps your brand stand out in the marketplace. Your customers recognise you for your branding, and know that when they see your logo, they are getting high quality products they can trust. Therefore, you should do everything you can to protect these distinguishing features from those who may seek to copy them. In that case, trade mark registration can help. In this article, we explain what a trade mark is, and why you should register.

What is a Trade Mark?

A trade mark is any sign you use to distinguish your goods and services from other businesses. A ‘sign’ could be your business or product name, logo, slogan, icon, colour, shape, scent or even a sound (sometimes even a combination of these things). For most businesses, a trade mark will come in the form of a name or logo.

Registering your business name or logo as a trade mark will mean that, when alleging infringement, you can simply point to the registration as evidence that your exclusive trade mark rights exist. In some cases, this may be enough for the infringing party to cease using your mark. But, on the flip side, a registered trade mark is a great defence against someone alleging that you are infringing their trade mark.

Different Types of Trade Marks

There are several types of trade marks that you can apply for. 

Word Trade Mark

This is the most basic trade mark and is purely verbal. This means that it only covers words and not any additional visual elements. However, it is potentially the broadest in its scope for protection, as it covers the word(s) in any font and colour. Another form of trade mark similar to a word trade mark is a ‘fancy’ or ‘stylised’ trade mark. This protects the word(s) in a specific font.

Figurative Trade Mark

A figurative mark includes visual elements, such as a logo. Figurative trade marks can also include words, but it is the only way to obtain protection for the non-verbal aspects of your trade mark. 

Certification Trade Mark

A certification trade mark demonstrates that the goods or services meet a particular standard. For example, the Heart Foundation Tick identifies foods that meet certain health standards.

Series Trade Mark

A series trade mark consists of multiple versions of one trade mark. For example, you could file for the trade mark ‘DOT’S CAFE’ and include multiple variations that specify a particular location, like ‘DOT’S CAFE NSW’ or ‘DOT’S CAFE QLD’. Other examples of a series trade mark could consist of multiple colour variations, or the inclusion of terms that simply describe the goods or services claimed. As long as the variation concerns distinct products, colours, locations and other purely descriptive elements under the same brand, it can constitute a series trade mark. 

Other Types of Trade Marks

Some lesser-known forms of trade marks include sound, movement, shape, colour and even scent. You can apply for these trade marks in the same way as the categories above. However, you will have to submit an example of either a file (i.e. audio or video file) or a concise written description.

Legal Benefits of Trade Mark Registration

The Right to Use the Trade Mark

A business or company name registered with ASIC is not the same as a registered trade mark. These are entirely different rights. A registered trade mark entitles you to be the sole user of a particular sign concerning certain goods and services included in the registration. It also provides you with a defence to trade mark infringement if another party alleges that your trade mark is similar to theirs.

This is something to consider when starting a new business. You might want to time the registration of a business name with the filing of a trade mark so that you do not inadvertently find yourself infringing on another entity’s intellectual property (IP).

The Right to Authorise Use

As the owner of a registered trade mark, you can authorise other businesses or individuals to use it for the goods or services claimed. For a franchise, this is crucial. 

The Right to Take Action Against Alleged Infringement

Without a registered trade mark, you are limited in actions available to stop people from copying your names or logos or using names/logos very similar to your own. You cannot bring an action for trade mark infringement unless you have a registered trade mark, and would need to rely on the more burdensome actions of misleading or deceptive conduct or passing off. A registered trade mark will give you the legal right to take action for trade mark infringement.

Non-Legal Benefits of Trade Mark Registration

There are some additional non-legal benefits of trade mark registration, that will nonetheless provide value to your business.

Key Takeaways

Ultimately, a trade mark is an important step in protecting your brand. Enforcing your rights as a trade mark owner is a separate matter, but having a registered trade mark will help you do so.

If you need help understanding trade mark applications, our experienced intellectual property 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