“The intention behind why a trade mark is filed is important in determining whether the application is valid.”- Barry Meskin
How to Trade Mark
What is a trade mark?
How to trade mark
A trade mark may be a word, logo, picture, product shape, colour or any other aspect of branding that differentiates your products or services from those of your competitors. How to 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.
Branding strategy considers 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?
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, which brings certain exclusive rights. In addition, a title means that the registered owner has an asset that can be licensed or sold.
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.
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 branding in Australia and internationally.
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.