Trade Mark Registration

So what’s in it for you?

Well, successful trade mark registration…

1. is the strongest form of brand, reputational and goodwill protection. Your business, company or domain name registrations do not confer ownership rights in the name but is merely for administration purposes.
2. gives you exclusive rights to use your trade mark in Australia for your goods and services.
3. generally gives you a legally enforceable right to stop other traders from using a trade mark that is the same or similar to yours for the same category of goods and services.
4. can warn your competitors and the market that you consider your trade mark as an asset with the ® symbol. This can also give your brand a professional image!
5. can give your business an asset in that registration, which you can sell or licence to other businesses.

Just like coffee, not all trade marks are made equal – some are weak, some are medium and others are strong as they come. So how do you measure the strength of a trade mark?

1. Avoid using a brand name that describes the goods or services you provide. For example, if you are running a graphic design business, you could never register the words “GRAPHIC DESIGN” as a trade mark for graphic design services as the Trade Marks Office would consider this to be descriptive and that others offering similar services would have a genuine need to use it. In contrast, a distinctive phrase for graphic design such as “made you look”, “Enigma Graphics”, “Beni Creative” and “tank” are all brand names that our firm registered that cover graphic design services.
2. Choose a brand name that is unique and has never been used before, such as a made up word, as this will make it easier to register and reduce the risk of infringing another trade mark.
3. Create a distinctive logo as this will again make it easier to register and stop another trader from using it should you be required to do so.

A two-month opposition period sounds like a daunting time, and clients often ask – what are the chances my trade mark will be opposed?

IP Australia says only about 5% of trade mark applications are opposed, and whether or not this gives you comfort, ultimately there are no guarantees.

If your trade mark is opposed and you do not overcome the opposition, the trade mark in question will lapse (i.e. you won’t get it registered).

To overcome opposition, you need to defend and address the issues raised. This is not necessarily a straightforward – or predictable – process, and can involve various steps such as:

• Detailed letters with the other side
• Negotiations
• Filing evidence
• Considering strategies

We have put together a table to show you some other examples of prior use and honest concurrent use. However, we must stress that each case will be different and even each judge is different so you can often never truly predict the outcome.

That’s why trade mark advisors will often tell you that there is a subjective element to this area of law.

You may be forgiven for believing that once you have your trade mark certificate, you can fold it away and renew it in ten years.

Unfortunately, not so.

Here are the basic tips you need to remember to practice good trade mark hygiene.

• Use your trade mark exactly as it is registered
  • For example, your word trade marks should contain the same spelling, punctuation and spacing. In the case of logo trade marks, always ensure all elements of the logo that are registered are consistently used.
• Use your trade mark by itself
  • Always ensure you use your registered trade mark by itself and independent of your business’s other trade marks and brand elements.
  • For example, nike uses various trade marks, such as their Nike tick logo, the words NIKE as well as their tagline “Just DO It” both in combination and by themselves.
• Change the ™ symbol to an ® symbol
  • People are often surprised to learn that the ™ symbol can be used even when your trade mark has not been registered.
  • However, once you have secured are a registration, don’t be shy and show it off by using the ® symbol instead.
• Use it or Lose it!
  • If it is left unused, a third party may be able to seek to have it removed from the register.
• Keep a Look Out in the Market
  • Keep an eye on you market, making note of any new trade marks that are being used by competitors and other traders.
  • If you see another business using a trade mark the same (or similar!) as yours, it is important to consider protecting your rights.
• Beware of Social Media – The Same Rules Apply
  • It is important to keep in mind that the same rules of trade mark use apply to social media – even if it’s just a simple caption on Instagram or a tweet on Twitter.