Key points
- Having a registered trade mark is the best way to protect your brand.
- Business owners need to conduct proper searches before committing to a new brand name or logo to market their goods or services.
The issue
Many a business has spent big dollars on designing a new logo, having their promotional material printed up and having ads placed, only to receive a letter a few months later from a law firm acting for a registered trade mark owner, alleging that the business has engaged in trade mark infringement.
Alternatively, the business may have gone through this process only to discover that a competitor is using the same or similar logo.
How can you prevent this from happening to your business?
A basic knowledge of trade marks and the searches you need to carry out can help.
Understanding trade marks
A trade mark is a “sign” that serves as a badge of origin for goods or services. A sign can be anything from a word to a logo to a colour or even a sound or scent.
The whole purpose of a trade mark is to identify to consumers that the goods or services originate from a particular source, and to thereby distinguish it from goods and services provided by other sellers in that particular market.
Importantly, usually over time, a trade mark acquires a “reputation” in that consumers associate it with particular things. In this way, trade marks can convey particular impressions to consumers, such as quality, reliability or image. For example, when you see the Coke® trade mark, you probably not only think of the soft drink but also the fun lifestyle portrayed by the advertisements for Coke®, which might sway you to buy a Coke® over a no-name brand of cola.
Unregistered vs registered trade marks
A trade mark can be unregistered, and is commonly denoted by the TM symbol, although the TM symbol in itself offers no legal protection.
An unregistered trade mark is not property, but the “owner” of the unregistered trade mark can protect it by suing an infringer for passing off or misleading or deceptive conduct.
However the “owner” of an unregistered trade mark will need to prove that its mark has acquired a reputation in the relevant market. That reputation may be restricted to certain geographical locations. For example, it would not be passing off or misleading for a fruit and veg shop in a suburb in Sydney to use the name “Green Joe’s” to market its goods or services, if that name was already in use by a fruit and veg shop in Brisbane, because a consumer who shops for fruit and veg in Sydney would probably not even be aware of a shop trading under the same name in Brisbane.
A registered trade mark, however, is property and is denoted by the ® symbol.
A registered trade mark can be mortgaged or sold just like any other property. Moreover, its protection extends throughout Australia, and the owner of a registered trade mark does not have to prove that the mark has acquired a reputation with consumers in order to succeed in an action for trade mark infringement, making it easier for the owner to enforce its rights.
Registration of a trade mark however is not the end of the story for a trade mark owner. The owner of a registered trade mark must use the trade mark, otherwise it could become vulnerable to an application to remove the trade mark from the register for non-use.
Registered trade mark owners must also always act promptly to protect their rights when they learn of any infringement, to prevent the trade mark from becoming generic, which can also lead to a trade mark being removed from the register.
Practical tips when starting a new brand
Business owners need to carry out a search of IP Australia’s trade mark register before committing money to a new brand or business name, to ensure that whatever word or logo they are using to sell their goods or services is not deceptively similar to a registered trade mark which a third party owns.
There is a bit of an art to searching the trade mark register, particularly when searching for trade marks that are logos.
It’s also prudent to not only search the trade mark register, but to conduct an internet search to see whether someone else is already using the word or logo, to avoid the risk of an action for passing off or misleading or deceptive conduct.
Ideally, business owners should register their intended trade mark before deploying it in the market, so that they have the comfort of knowing they will not be at risk of infringing somebody else’s registered trade mark.
Further information
If you have any questions regarding trade marks, please feel free to contact the author, Daniel Fleming.
This article is intended to provide general information in summary form on a legal topic, current at the time of publication. The contents do not constitute legal advice and should not be relied on as such. Formal legal advice should be sought in specific circumstances.