Protecting Trade Marks in Australia

A trade marks is a badge of origin. It enables a proprietor of a business to distinguish the goods or services of the proprietor's business from the goods or services of another business.

In Australia, trade marks may be registered or unregistered. Registration of trade marks in Australia is regulated by the Trade Marks Act 1995 (Cth). Trade marks may be unregistered because they do not meet the registration requirements of the trade marks act or simply because the proprietor has failed to apply for registration of the trade mark.

Generally, registered trade marks are easier to protect than unregistered trade marks because the owner of a registered trade mark can bring an infringement action under the Act and rely on certain presumptions in the Act in relation to the effect of registration. Unregistered trade marks generally can only be protected by bringing an action for passing off or for breach of section 52 and related provisions of the Trade Practices Act 1974 (Cth) (or State equivalents) which prohibit misleading or deceptive conduct. (Both of these are discussed in an upcoming lens.)

Trade marks are registered in respect of specified goods, services or both. The trade mark system divides goods and services into 45 classes (34 for goods and 11 for services). These classes reflect the international classification of goods and services. The trade mark registration specifies both the class and the goods or services within the class which the registration covers. In Australia, it is not possible to register a trade mark for all goods or services in a class unless the applicant or owner does in fact use the trade mark in respect of all of the goods and services included in the class.

Trade marks are a national right so if a business wants to expand outside Australia, the business will need to consider applying for trade mark registrations in the relevant countries.

In Australia, the ® symbol can only be used in respect of registered trade marks. It is an offence to use the symbol when a trade mark is not registered. The %u2122 is used for unregistered trade marks.

Any word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour and scent or combination of these is capable of being registered as a trade mark as long as:
* it can be represented graphically;
* it distinguishes the goods or services of a business proprietor from the goods or services of another business proprietor (this requires an assessment of whether the trade mark is inherently adapted to distinguish the goods or services of the business from others or if it is not, whether it is capable of doing so through use and other relevant circumstances) ;
* it is not identical or substantially similar to a mark that is already registered, or the subject of a prior trade mark registration application, for the same goods or services or closely related goods or services;
* it is not scandalous or its use is otherwise not contrary to law;
* it is not likely to deceive or cause confusion in the marketplace.

Some trade marks, such as made up words, are considered to be inherently distinctive of the business in respect of which it is used and achieve registration comparatively easily. However, common or descriptive words (such as chips) are less likely to achieve registration as other business proprietors in the applicable field have a legitimate interest in using the trade mark. In this instance, the applicant would need to demonstrate that either through existing use (where an application is filed after the business has commenced using the trade mark) the mark has become associated in the minds of the public with the business or the proposed use is capable of resulting in the mark being associated in the minds of the public with the business.

The business proprietor (which most commonly will be an individual, partnership, company or trust) files an application with IP Australia providing details of the trade mark and nominating the classes and specific goods and services in respect of which the trade mark will be used. The trade mark application is then examined. During the examination process, IP Australia might raise issues which must be resolved before the trade mark can be accepted for registration. If the application is accepted, the applicant is notified and the acceptance is advertised in the official journal. For a period from acceptance (currently three months), the trade mark may be opposed by third parties who may object to the registration. If the trade mark is un opposed during the objection period, the trade mark is recorded on the register. If the trade mark is opposed, a the trade mark will not be recorded until the opposition process is completed in favour of the applicant either by agreement of the applicant and party opposing or conclusion of the formal opposition process. The process can be time consuming and can result in a modification of the scope of goods or services originally included in the application.

The applicant is the owner of the registered trade mark. However, if the trade mark is design or logo, the applicant should ensure that the applicant also owns any copyright in the logo or design.

A trade mark registration is granted for an initial period of 10 years and will last indefinitely as long as the registration is renewed every 10 years. If a trade mark is not used for a period of 3 years and one month, a person can apply to have the trade mark registration removed on the grounds of non-use. This action can only be brought after the expiry of five years from the date on which the application for registration was filed. A trade mark registration can also be removed if the applicant did not have any intention in good faith of using the trade mark in Australia or authorising others to use the trade mark or if the trade mark becomes generic (ie, the trade mark becomes generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service).

The first benefit of registration is that the Trade Marks Act specifically provides that a trade mark registration is personal property and can be dealt with in the same way as personal property subject to some limitations. This means that the owner of the registered trade mark can sell the trade mark (in fact, many famous trade marks have a significant value), can create a mortgage or other security interest over the trade mark and license another person to use the trade mark.

The second benefit is that a trade mark owner can prevent others from infringing the owner's trade mark (For a discussion of what constitutes infringement, see below.) While a person who does not have a registered trade mark can prevent others from using the mark by bring an action for passing off or for misleading or deceptive conduct, it is generally easier to succeed in an action for trade mark .

To succeed in an action to restrain infringement of a registered trade mark, the owner need only show that he or she is the registered owner of the trade mark and this can be proved by using the records maintained by IP Australia and the trade mark was infringed. Therefore, proof of ownership is quite simple even though proof infringement may be more complex.

To succeed in an action for passing off, the applicant must show that:
* an established reputation or goodwill exists in respect of the goods or services by association with their name, logo or get up and which is recognised as distinctive;
* the defendant's activities have made a misrepresentation to the public which have caused confusion in the minds of the public; and
* this reputation has been damaged by the defendant's conduct.
All of these can be difficult and therefore time consuming and costly to prove.

To succeed in an action for misleading or deceptive conduct under section 52 of the Trade Practices Act, it is necessary to show that the defendant engaged in conduct that is misleading or deceptive or likely to mislead or deceive, In very simple terms, it requires the defendant to have made a misrepresentation. All of these can be difficult and therefore time consuming and costly to prove.

The main disadvantage is the fact that the trade mark can be removed for non-use (as discussed above). It can be time consuming and costly to achieve registration and then monitor trade mark usage if a proprietor has businesses outside Australia.

A registered trade mark is infringed by using the same or similar trade in mark in relation to:
* goods or services which are the same or similar to goods or services for which the mark is registered;
* services which are closely related to goods for which the mark is registered; or
* goods which are closely related to services for which the mark is registered.
Special provisions apply for well known marks. The owners of well known marks can prevent use of the same or similar mark in all classes in addition to those in which its mark is registered or related goods classes because the mere use of the trade mark would lead the public to conclude there is some form of connection between the goods and the owner of the well known brand and the owner of the well known brand is therefore likely to be adversely affected.
A trade mark can also be infringed by an invisible use such as including the trade mark in a metatag of a website or ask keywords for search engine optimisation.

Internet domain names have substantially similar properties to trade marks. In practice, a business should consider registering its name or the names of its key products as trade marks at the same time as considering registration of a business name or company name. (It should be noted that many domain name registries prohibit registration of a domain name if it would infringe a valid trade mark in the jurisdiction.)