A trade mark used for goods or services indicates to customers
a connection between those goods or services and a particular
trader. Unless rights in the mark have been unlawfully obtained,
transferred or abandoned, the first user of a mark in Australia
is the owner of the mark.
Types of trade mark include words (MAMBO), initials (IXL
or AMP), graphics (ABC TV symbol), colour combinations (BPs
green and yellow colours) and shapes (Coca-Cola bottle shape).
It is crucial to have a trade mark search and opinion conducted
before commencing use of the trade mark, to reduce the chance
of legal action which can lead to product recall, re-branding
and payment of damages.
Unregistered Trade Marks
Registration of a trade mark is not compulsory. However, protection
of rights in unregistered marks, by trade practices and passing
off actions, requires proof of an established reputation in
Registered Trade Marks ®
The owner of a trade mark used or proposed to be used in
Australia can apply for registration of the mark for the goods/services
for which the trade mark is used or proposed to be used. Goods
and services are divided into 45 separate classes, and extra
fees are payable for each class to be covered by the application.
The owner entitled to register a mark is the party who is
responsible for the quality of the goods/services. This will
often, but not always, be the manufacturer.
Licensing of registered trade marks is permissible providing
the trade mark owner maintains broad quality control, e.g.
specifications as to minimum standards.
Trade mark applications are examined by the Trade Marks Office
of IP Australia and, if accepted, are subject to a 2-month period for opposition
by third parties. A trade mark will not be registered if:
- it is likely to be needed by other traders in the ordinary
course of trade, e.g. descriptive words or symbols, surnames,
- the trade mark is substantially identical to one already
used in Australia by another owner, for the same goods/services
- the trade mark is confusingly similar to an earlier registered
mark or pending application by a different owner, for goods
or services closely related to those of the application
- use of the trade mark is likely to cause confusion, in
view of established use of a similar mark by another owner
The same or similar trade marks can co-exist for different
goods or services by different traders providing the respective
goods/services are sufficiently different so that no confusion
will arise. (For example, SWAN for beer or for pencils). However,
famous marks may have rights extending beyond similar goods/services.
Proof of an established reputation in the trade mark can
help achieve registration of a descriptive mark, or proof
of longstanding market place co-existence, can help overcome
rejection on the basis of an earlier registration.
Registration of a trade mark gives the owner the right to
restrain the infringing use of deceptively similar trade marks
by others for the goods/services registered and, with some
exceptions, for similar goods/services, and to gain compensation.
After it has been registered for five years, a trade mark
not used in Australia in the previous three years can be removed
from the Register.
Registering a business name is not the same as registered a trade mark. It gives
you no right of action against others.