One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
How to Trade Mark
What is a trade mark?
A trade mark is the face of a business. It directs customers back to the source of the quality of the goods or services. A successful trade mark comes to embody the quality of the goods or services provided by the business, building brand loyalty and reputation. To stand out from the crowd, you need a strong and distinctive trade mark; thus, you need to know how to trade mark your brand.
An Australian trade mark attorney or lawyer, such as one of our trade mark attorneys in Sydney or Melbourne, can prepare and apply for a trade mark on your behalf.
How to trade mark
A trade mark is a form of intellectual property designed to protect one’s brand, and the legal term for the intellectual property protected under a trade mark is a sign. A sign may include a word, a tag line, a logo, a visual or packaging aspect, even a smell or a sound, or a combination of these elements. The signs’ purpose is to distinguish the trade mark owner’s goods and/or services from those of their competitors.
How do you choose a good trade mark? A good trade mark:
- Distinguishes your products or services in the marketplace; and
- Conveys the marketing message you want your clients or customers to hear.
In choosing a branding strategy, you should consider both what conveys your message in the marketplace together with what can distinguish your brand from others in the marketplace.
Trade marks cannot attempt to take the language that other traders might want to use legitimately to describe a quality or characteristic of their own goods or services. Therefore, great trade marks either include:
- Totally original words, images or combinations; or
- Words, images or combinations of words and images that:
- contain some element of distinctiveness,
- create an emotion or an illusionary effect, which bring the goods/services to life, or
- are unusual.
Our trade mark attorneys, who are based in Sydney and Melbourne, can advise you on how to trade mark such that your proposed trade mark is likely to be able to distinguish your brand from others in the marketplace.
Why is it important to register a trade mark?
Trade mark registration provides certain benefits exclusive to you as the trade mark owner, such as the ability to:
- assign, sell or license the trade mark;
- pursue parties that infringe on your trade mark; or
- list trade marks among other intangible assets, which helps reinforce valuation.
Importantly, registering a trade mark makes it easier for you to stop other businesses from copying your trade mark because the owner of a trade mark has a title to ownership.
Without a registered trade mark, your only protection against trade mark infringement lies in common law torts (e.g. passing off) and Section 18 of the Competition & Consumer Act 2010. Thus, it is more difficult to cost-effectively prosecute a trade mark infringement incident without a registered trade mark.
In accusing another party of passing off conduct, the plaintiff (i.e. the owner of the trade mark) needs to prove that their own brand has established sufficient reputation attached to the common law trade mark, which takes time to develop, and that the accused party actively sought to deceive consumers into thinking that they are buying a product sourced from original common law trade mark. By contrast, trade mark registration provides the trade mark owner an automatic right to enforce and thus protect their mark against infringers.
A common misunderstanding is that a business name or company name provides some form of protection; however, these are mere listings that do not provide any means for enforcement.
Why do I need a trade mark attorney?
Since trade marks are so often a valuable corporate asset and given the many pitfalls to be avoided in the trade mark application process, trade mark applications should always be professionally prepared by a registered trade mark attorney. Before adopting a new trade mark, searches can be conducted to check the availability of the trade mark for use and registration. This helps reduce the risk of infringement of a prior trade mark registration and the likelihood of objection during examination.
Our trade mark attorney team combines extensive business experience with a thorough approach to preparing trade mark applications so as to help clients protect their brand in Australia and internationally.
Notably, trade mark protection is only applicable in the country in which the trade mark is registered. To obtain protection for the trade mark in other countries, one must register the trade mark in each of the countries of interest. Our Sydney and Melbourne based trade mark attorneys can also provide advice on how to trade mark internationally. This could, for instance, include a consideration of overseas trade mark availability or whether branding and trade mark strategies match or align and are likely to be appropriate in other countries.