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.
Registered trade marks vs unregistered trade marks
Registered Trade Marks
As defined by Section 17 of the Trade Marks Act, “a trade-mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.” A trade mark is a sign consisting of text, logo, slogan, color, sound, movement, other elements or a combination of any of those that is used to trace back a product or a service to its source. To obtain a registered trade mark, the owner has to lodge an application to the trade mark office of the pertinent jurisdiction; after a certain examination period, the trade mark is accepted and published in the official trade mark registry for the public, heralding a period during which any third party can oppose the registration. If the said opposition was proven to be without merit, then the trade mark would proceed to registration. Upon registration, a registered trade mark is retroactively enforced to its priority date and renewable every 10 years with the payment of the appropriate fees. In Australia, the enforcement of registered trade marks is governed by the Trade Marks Act 1995.
Unregistered trade mark
An unregistered trade mark, also known as common law trade mark, is similarly a brand made up of the same elements as in the above definition. This mark is also used to trace back the goods and services to its source; however, this type of mark is not provided any statutory protection by the Trade Marks Act 1995. Instead, the avenues of relief for common law trade marks are strongly reliant on the reputation developed by the mark through consistent use, as well as proof of fraudulent conduct on the part of the offending party. An unregistered trade mark can be enforced through the common law tort of “passing off” and deceptive conduct as stated in the Australian Consumer Law. To enforce an unregistered trade mark, three things need to be established:
- That the trade mark has acquired considerable reputation in the market;
- That the offending party deliberately sought to mislead customers regarding the origin of their goods or services
- That the owner of the unregistered mark has sustained damages and losses because of the action of the offending party.
™ vs ®
The sign ™ is affixed to show the market that a particular trade mark has been claimed. Any trade mark owner can use the ™ sign, whether they applied for trade mark registration or not. In itself, the ™ sign offers no protection, but it may act as a deterrent for parties who may consider filing a registration for a similar trade mark because the sign may imply a pending trade mark application. When the trade mark is registered, the sign ® is affixed to the trade mark, indicating that trade mark protection is in force. The use of ® on unregistered trade marks is illegal.