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If you are wondering whether or not you need a trade mark, the chances are that you already have one. So, the better question is whether or not you have a registered trade mark. In the following article, we will examine the legal and non-legal rights of trade mark registration and the importance of obtaining trade mark protection overseas.

What is a Trade Mark?

By definition, a trade mark is any sign that you use to distinguish your goods and services from those 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.

A business does not need to register a trade mark to have one. Your business may have a common law trade mark. This means that it exists because you have been using a particular sign as a badge of origin. However, if you allege unauthorised use of this mark, you will have the burden of demonstrating that this common law trade mark exists in the first place.

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. 

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 completely 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 their registered mark.

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 concerning the goods or services claimed. For a franchise, this is crucial. 

Generally, a licence is the appropriate document to authorise another entity or person to use your registered trade mark. 

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. A registered trade mark will give you the legal right to prevent such confusing or deceptive conduct from occurring.

Non-Legal Benefits of Trade Mark Registration

Higher Sale Value

Should you ever consider selling your business, trade marks are saleable assets like any other physical asset. Essentially, you would be selling peace of mind to a new owner, along with the goodwill attached to your brand.

Professional Look

A portfolio of registered trade marks for logos, names, slogans, etc., will give you the look of a serious business that knows what they are doing. Therefore, consumers and investors will be more likely to trust your business.

Additional Income Stream

If you are not using a particular trade mark, or if you want to franchise your business, licensing your trade marks can provide you with generating further income by authorising others to use it on an agreed set of terms and conditions.

Can I Register a Trade Mark Overseas?

If you have an Australian trade mark, you may be wondering if you can gain the benefits and protections of your trade mark in overseas markets. Luckily, there are two main methods of registering your trade mark overseas.

Madrid Protocol Application

Registering your trade mark in Australia is the first step in ensuring that your brand is protected. However, an Australian trade mark only protects you in Australia. If you are planning on expanding overseas, you might want to consider filing a Madrid Protocol application. This essentially allows you to file a trade mark in a list of designated countries based on your existing registration in Australia. 

You will see an immediate benefit from going down this route because, no matter how many countries you designate, they will all come under the one Madrid Protocol application. This can be a huge help with maintaining a trade mark portfolio. Furthermore, if you file within six months of filing your Australian application, you can claim the Australian filing date as the date of filing for the Madrid Protocol application.

Direct Foreign Application

The Madrid Protocol does not cover every country. If one of these countries is of interest to you, you will need to file directly in that particular country. This will usually require assistance from a law firm practising in that country.

Key Takeaways

Overall, there are a few things to remember when it comes to trade marks. You do not need to apply to have a trade mark. However, having a registered trade mark provides you with many benefits, both legal and non-legal. It is also important to remember that Australian trade marks only protect you in Australia. For protection overseas, consider filing a Madrid Protocol application or a direct foreign application. If you need any help with registering your trade mark, contact LegalVision’s intellectual property lawyers on 1300 544 755 or fill out the form on this page.


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