Trade Mark

WHY TRADE MARKS

Trade marks, by definition, is a sign to distinguish a person’s goods and services from another person’s goods and services. It is a badge of the origin, but more importantly, it is a badge of a brand, a short, sharp, easy-to-remember sign of the reputation and quality of someone’s goods and services. Protection of the badge protects such intangible but valuable assets of a business.

TRADE MARK PROTECTION IN AUSTRALIA

Trade marks can be either be unregistered, or registered in a national register in respect of certain classes of goods or services.

Registered trade marks are protected under the Trade Marks Act 1995. The owner of a registered trade mark may seek legal remedy if someone else without authorisation uses the mark or similar ones on goods or services covered by the registration.

Unregistered trade marks are protected under the law of passing-off and Section 18 of the Australian Consumer Law. The law of passing-off prohibits a person from using another person’s unregistered trade marks to suggest a false connection between their goods or services. Section 18 of the Australian Consumer Law prohibits such use in trade and commerce which is misleading or deceptive to the general public.

It is highly recommended to register trade marks as it offers a more cost-effective means of protection. Without registration, the trade mark owner will have to prove the reputation behind the unregistered trade mark, and that someone else’s unauthorised use of the mark deceives a significant number of people and causes loss to the owner – in many cases a heavy, costly evidential burden to discharge.

REGISTRATION & MAINTENANCE OF TRADE MARKS

The first step for trade mark registration is to determine the mark and the classes of goods and services where the mark will be used. Then, an application needs to be filed with IP Australia. The trade mark in application will not only be examined by IP Australia, but also be published for the general public to raise oppositions. The trade mark will be registered after passing the official examination and overcoming oppositions, if any, within prescribed periods.

A registered trade mark must be renewed every 10 years. During the life of registration, the mark must be used on its registered classes of goods or services, or others may apply for removing the registration for non-use.

Legal remedies against trade mark infringement include court injunction, damages, account of profits, customs seizure and disposal of infringing goods etc (different remedies are available depending on registration or not). We offer clients the following range of trade mark services:

• Preregistration advice
• Trade mark application
• Trade mark maintenance, monitoring and renewal
• Trade mark opposition & removal
• Actions against trade mark infringement