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Trade mark Basics, What You Need to Know

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Trade mark Basics, What You Need to Know

Everything you ever wanted to know about trade mark registration.

Top trade mark tips:

  1. Select something distinctive (not descriptive).
  2. Register as a trade mark asap.
  3. Keep a record of your trade mark use.

Business name.

A business name does not give you any intellectual property protection. When you trade under a specific name, you are legally obliged in Australia to register that name as a business name. When Australian Security and Investment Commission (ASIC) registers your business name, they do not check the trade marks register.

Your registered business name could be registered as a trade mark by someone else, and you could be infringing that trade mark by using your registered business name.

First to file generally has stronger rights.

The first to file a trade mark application generally has stronger rights in that particular country. If someone files your brand or business name as a trade mark before you do, you may be able to retrieve it, but that can cost $100 000+.

Geographic extent of protection.

A trade mark is valid throughout the country in which it is registered. Your Australian trade mark therefore only protects you in Australia. In Europe, a European Community trade mark would protect you in all of the European Community member countries.

You can extend your Australian trade mark to other countries within six months of the Australian filing date, and still keep the Australian date. Outside of the six months, you can file directly into overseas countries, but cannot claim the benefit of the Australian date (remember, first to file).

Goods/Services.

The trade marks register is divided into 45 ‘classes’. A government fee is payable per class (the more classes, the more expensive your trade mark protection). You have to specify the goods/services you want protection for (for example, business coaching or jewellery). Depending on what goods/services you want, your trade mark will fall into one or more classes.

Valid for 10 years.

A registered trade mark is valid for 10 years from the date of registration. It can be renewed indefinitely for 10 year periods after that.

Non-use removal.

A trade mark that is not used for three or more consecutive years is vulnerable to removal on the basis of non-use. If a removal application is filed against your trade mark, you have to prove you have made commercial use of it in the past three years. If you cannot, your trade mark will be removed. It may be partially removed (if you can only show use on some of the goods/services in your registration).

Complete defence to trade mark infringement.

Having a trade mark registered is the only complete defence to a trade mark infringement. When my client received a letter of demand alleging that he had infringed a trade mark belonging to a multi-million-dollar company, we simply sent them a copy of his trade mark certificate and never heard from them again. His trade mark certificate was a complete defence to their allegation.

Common Law trade mark rights.

If you have a registered business name that you use as a trade mark but have not registered as a trade mark and you have built up a reputation in that name, in certain circumstances, you might be able to stop others from using a similar name, but this is generally very restricted and difficult and costly to prove.

Selecting a strong trade mark.

The strongest trade marks from a legal perspective are distinctive and non-descriptive. Think of Apple for computers. Incorporating descriptive elements (as encouraged by some marketing experts) can leave you with a weaker trade mark.

Descriptive marks are very difficult to register. They are also more likely to be copied (sometimes with variations) by competitors. No one can really vary ‘Apple’ for computers and get away with claiming it is an innocent description!

Personal name as a trade mark.

Kylie Minogue was sensible enough to register ‘Kylie’ as a trade mark. Should you register your personal name as a trade mark?

If your personal name is used as your brand name, then I strongly recommend that you obtain trade mark registration for it. For example, I registered Public Relations (PR) legend Tanya Target’s personal name for her (first and surname, unlike Kylie, who just went with her first name). The reason for this is that Tanya Target is her brand as well as her personal name. If somebody else registered that name before her for training and PR, they could have stopped her from using the name as a brand (of course, she could still have used it as a personal name on a passport).

Bulletproof your brand.

The only way to protect your business name or brand name is through trade mark registration, the costs of which are minor compared with the potential costs of a trade mark dispute if you do not secure your rights before a competitor does.

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