Filing for a trade mark is a crucial step for any business aiming to protect its brand identity and gain exclusive rights to use a particular mark. However, a comprehensive trade mark strategy before filing the application can save costs and avoid lengthy opposition proceedings.

An application to register the trade mark was filed under application number 2099988 on July 6, 2020. The application covered services in classes 35 and 44, including business management and medical advisory services. Acceptance of the trade mark was advertised on December 7, 2020, leading to an opposition notice filed by the Australian Traditional Medicine Society Ltd (ATMS) on February 3, 2021.

The ATMS, represented by Baxter Patent Attorneys Pty Ltd, opposed the registration on several grounds, primarily under sections 41 and 43 of the Trade Marks Act 1995 (Cth), arguing that the trade mark "" was not capable of distinguishing applicant’s services from those of other traders. The opposition highlighted that the terms "accredited" and "nutritionist" are commonly used and descriptive, thus lacking distinctiveness.

The Hearing Officer concluded that the trade mark was indeed descriptive and lacked the inherent adaptation to distinguish applicant’s services from those of other traders. The decision emphasised that a combination of descriptive words, even with a design element, does not necessarily qualify for trade mark protection, if the mark does not sufficiently distinguish the services. As a result, the application was refused, and applicant was ordered to bear the costs of the proceedings. Baxter Patent Attorneys Pty Ltd successfully stopped a descriptive mark from being registered, protecting the interests of ATMS.

A strategic approach to trade mark registration involves a number of considerations. A first is that a mark must be distinctive. Descriptive marks that merely describe the product or service's characteristics are unlikely to be registered unless they have acquired distinctiveness through extensive use.

Secondly, the mark should be considered by a Trade Mark attorney who has a thorough understanding of local trade mark law and how it might apply to the proposed mark.

If you're facing a potential trademark dispute, please contact our Trade Mark Attorneys to discuss strategy.

Filing a trade mark? Don't skip the strategy! A case study reveals the importance of distinctiveness & legal advice to avoid opposition. Protect your brand with expert tips.

Australian Traditional Medicine Society Ltd - A case highlighting the Importance of Trade Mark Filing Strategy

The Importance of Branding in Real Estate

In the intensely competitive real estate industry, the importance of a strong brand cannot be overstated. With the Australian real estate market valued in the billions, ensuring that your agency stands out is crucial for attracting and retaining clients. A robust brand not only helps in distinguishing your services from those of your competitors but also builds trust and loyalty among customers. This trust is particularly important in real estate, where clients make significant financial and emotional investments.

As of the latest data, the Australian real estate market is one of the most lucrative sectors, contributing significantly to the national economy. With thousands of real estate agencies vying for the attention of potential clients, the ability to differentiate oneself is key. A well-established brand can leverage its reputation to command a premium, influence purchasing decisions, and ensure that clients return for future transactions.

Customers often engage real estate agencies based on the goodwill they have cultivated in the market. This goodwill is built over time through consistent delivery of quality service, positive client interactions, and strong market presence. However, many agencies fail to strategically protect this goodwill by neglecting the crucial step of trademark registration for their logos and brand elements.

Trademark registrations are powerful business tool which provides essential protection for a brand's identity, ensuring consumers can reliably identify the source of products or services. By securing exclusive rights to specific symbols, logos, names, or phrases, businesses can prevent unauthorized use and maintain their brand's value and reputation. The key benefits include legal protection against infringement, enhanced brand recognition and loyalty, competitive market advantage, increased asset value, and facilitation of global market expansion. To uphold a trademark's strength, it is crucial to use it consistently, mark it properly with ™ or ® symbols, monitor for infringements, and renew the registration on time. Effective trademark management helps businesses safeguard their brand identity, enhance market presence, and secure a competitive position in the industry.

Importance of Strategy in Trademark Registration: The Case of The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd

The recent legal battle, The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd [2023] FCAFC 203, highlights the pitfalls real estate agencies can face when their trademark registrations are not thoroughly strategized. The case centered around the use of the term “The Agency” and whether The Agency Group had exclusive rights to this term in the real estate market.

Scope of Trademark Protection: The primary issue was whether The Agency Group had exclusive rights to the term "The Agency" or whether their rights were confined to the specific stylized form of the logo as registered.

Trademark Use and Infringement: Another crucial point was whether H.A.S. Real Estate's use of a similar term constituted trademark infringement, considering the exact form and context in which the term was used.

In its decision, the Federal Court of Australia highlighted several critical points that shaped the outcome of the case.

Paragraph 56 of the judgment is particularly instructive: "Therefore, the exclusive right to use the AGENCY Mark in respect of the designated services that is conferred on the second appellant, as owner of the mark, by s 20 of the Act, is not the right to use the words ‘THE AGENCY’; it is the exclusive right to use those words represented in the particular stylised form of the mark as registered. To ignore the significance of the particular stylised form of the AGENCY Mark would be to extend its scope well beyond the monopoly that has been granted to the second appellant by registration of the mark under the Act: Australian Meat Group at [78]. This is an important matter to bear in mind, which was recognised by the primary judge."

Here, the court underscores the distinction between registering a stylized mark and a word mark. The Agency Group’s trademark protection was limited to the specific stylized form in which “The Agency” was registered. This did not automatically confer exclusive rights over the use of the words “The Agency” in any form or context. The court reiterated that the monopoly granted by a trademark is restricted to the exact depiction registered.

The judgment points out that granting exclusive rights to generic words, irrespective of their stylized presentation, would be an overreach. This restriction ensures that common terms remain available for use by others, preventing monopolistic control over ordinary language, which is crucial in the commercial context.

For real estate agencies, this case serves as a cautionary tale. When registering trademarks, it is essential to:

Try to Register Both Stylized and Word Marks: Ensure that both the stylized version of your logo and the word mark are protected. This provides broader protection and prevents competitors from using similar names in different forms.It might not be possible to register the word mark if it is descriptive.It might be only the logo is making your mark distractive.

Comprehensive Trademark Strategy: Develop a comprehensive trademark strategy that covers all possible variations of your brand elements. This includes logos, slogans, and any other distinctive elements associated with your brand.

Regular Trademark Audits: Conduct regular audits of your trademark portfolio to ensure that all critical elements of your brand are protected and to identify any potential infringements.

Legal Consultation: Engage with intellectual property lawyers who specialize in trademarks to navigate the complexities of trademark law and to ensure that your registrations provide the broadest possible protection.

Strategic Implications for Real Estate Agencies

Given the competitive nature of the real estate market, agencies must prioritize trademark protection as part of their broader business strategy. Effective branding and trademark enforcement can:

Enhance Market Position: Strong trademark protection helps in establishing a distinct market presence, which is crucial for client acquisition and retention.

Build Customer Trust: A protected and well-managed brand fosters trust among clients, who often base their choice of agency on reputation and perceived reliability.

Prevent Legal Complications: A robust trademark strategy can pre-empt costly legal disputes, such as the one faced by The Agency Group, by ensuring that the brand’s distinctive elements are adequately protected from the outset.

In the real estate industry, where brand recognition and goodwill are paramount, securing your brand through strategic trademark registration is not just important; it is essential. The case of The Agency Group Australia Ltd v H.A.S. Real Estate Pty Ltd serves as a stark reminder of the limitations of trademark protection and the need for a thorough, strategic approach to trademark registration. For any real estate agency, whether established or just starting, prioritizing the protection of your brand can prevent costly legal battles and safeguard your market position. By securing both stylized logos and word marks, and maintaining vigilant oversight of their brand usage, agencies can safeguard their market position, build enduring client trust, and avoid the pitfalls that can arise from inadequate trademark protection.

For branding review and trade mark strategy and enforcement use connect with the expert team at Baxter IP.

Discover the critical role of branding in the competitive Australian real estate market and the importance of strategic trademark registrations to protect and enhance your agency's reputation.

The Importance of Brand in the Real Estate Industry and Use of Trademark Registrations 

 (Cth) (the Act) sets out the requirements for a patent specification relating to a deposit of a micro-organism made under the 

International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure

 (1977) (the Budapest Treaty). This was covered in an 

Section 42 of the Act sets out what might happen if a deposited micro-organism ceases to be reasonably available. An example of this is if the microorganism which was deposited is no longer viable.

The deposit requirements are set out in Section 6, which require that:

(a) the micro-organism was, on or before the date of filing of the specification, deposited with a prescribed depositary institution in accordance with the rules relating to micro-organisms; and

(b) the specification includes, at that date, such relevant information on the characteristics of the micro-organism as is known to the applicant; and

(c) at all times since the end of the prescribed period, the specification has included:

(i) the name of a prescribed depositary institution from which samples of the micro-organism are obtainable as provided by the rules relating to micro-organisms; and

(iii) the file, accession or registration number of the deposit given by the institution; and

(d) at all times since the date of filing of the specification, samples of the micro-organism have been obtainable from a prescribed depositary institution as provided by those rules.”

If the deposited micro-organism is no longer viable, the requirement of subsection 6(d) of the Act is not satisfied and the Examiner may declare that the specification does not meet the requirements of section 40 of the Act . Under section 40 of the Act, there must be a clear enough and complete enough disclosure of the invention.

The Examiner must notify the applicant if a declaration is made in accordance with the patent regulation 3.29(2). The applicant is entitled to request a patent office hearing to decide the matter.

To rectify the issue, the applicant or patentee must make a new deposit of the same micro-organism within the prescribed period as per the relevant regulations. A copy of the new deposit receipt must also be filed within the relevant prescribed time.

If a new deposit can only be made outside the prescribed period, the applicant or patentee can apply for an extension of time.5

When a new deposit is made, the applicant or patentee must amend the specification to insert the details of the new deposit including the name of the prescribed depositary institution and the file, accession, or registration number of the deposit to meet the deposit requirements.

Patenting micro-organisms in Australia – Section 42

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