An enterprise's trade mark can be a very valuable asset. In many areas, the success of a marketing campaign can be credited to the choice of a trade mark. Therefore on having chosen a trade mark, it is very important that consideration be given to obtaining the best protection available for that asset.
International trade mark protection
Australia
What is a trade mark?
A trade mark (often referred to as a trade name or brand) is a word, name, picture, logo, sound, smell, shape, aspect of packaging, or a combination of any two or more of these items which is used in relation to goods and/or services to identify them with the person providing those goods and/or services.
How do I protect my trade mark?
(a) Unregistered trade marks
Under common law, protection exists in the reputation or goodwill of a trade mark and can be defended by taking a "passing off" action against anyone who attempts to appropriate such goodwill. Such protection, however, is not directed at the trade mark itself but rather at its reputation. The more extensive the reputation, the greater the protection.
(b) Business Names and Company Incorporation
Registering a business name or company name does not provide any rights in the name itself.
(c) Registered Trade Marks
Registering a trade mark under the provisions of the Trade Marks Act provides an exclusive monopoly in the trade mark irrespective of its reputation, and such rights can extend throughout Australia.
Can any trade mark be registered?
No.
To be registrable, a trade mark needs to be capable of distinguishing your goods and/or services from those of other traders. As a result, your trade mark should not be:
- directly descriptive of the goods and services with which they are used, (eg. "SHREDDED WHEAT" for use with breakfast cereal and "ORLWOOLA" for use with woollen goods.)
- complimentary of the goods or services (eg. "PERFECTION" for use with soap)
- a common surname
- geographic (eg. "MICHIGAN" for use with machinery and "YORK" for use with trailers)
- otherwise incapable of distinguishing your goods and/or services, such as a set of letters or initials.
However, if a trade mark is presented in a visually distinctive manner it may be registrable despite not fulfilling the above requirements. In addition, when a trade mark fails to meet the above tests of registrability, but has been used extensively, it may be deemed registrable as a result of its reputation.
Further, a trade mark must not be confusingly or deceptively similar to a trade mark which is already in use, or which is the subject of an earlier trade mark application or registration that is in force.
How can I register my trade mark?
By filing an application at the Trade Marks Office in the appropriate classes of goods and services. Wray & Associates has the expertise to assist you in this regard.
What steps should I follow in protecting my trade mark?
- Develop a list of desirable trade marks
- Review each of the trade marks, in regard to their acceptability to the market
- Review each of the trade marks, in regard to their registrability under the Trade Marks Act
- Search the Australian Trade Marks Office records for any similar trade mark
- Search the Trade Mark Office records in each country in which the trade mark is to be used
- File an application at the Australian Trade Marks Office in the appropriate class or classes for the trade mark
- File applications at the Trade Mark Office in each country in which the trade mark is used and/or is intended to be used.
Wray & Associates qualified and experienced staff can provide assistance with each of these steps.
How do I keep a trade mark registration valid?
Once a trade mark has been registered it is necessary to maintain the trade mark in bona fide use. It is not possible to build up a portfolio of trade marks which are not in use.
In Australia, if it can be established that there has been no bona fide use of the trade mark within a continuous period of three years it is possible for another party to apply to have the trade mark registration removed.
In addition, the trade mark must not be used by you or the public as the name of the goods with which it is used. "Linoleum" and "Gramophone" are two words that have lost their distinctiveness as trade marks and have entered the public domain as generic terms as a result of their misuse.
How long does a trade mark registration last?
For as long as the owner continues to renew the registration.
How often must a trade mark registration be renewed?
In Australia, a trade mark registration has an initial life of 10 years from the date of application and is renewable for further consecutive periods of 10 years thereafter.
In other countries similar provisions exist but the periods vary.
International Trade Mark Protection
Is protection available by means of a world trade mark registration?
No.
It is necessary to seek protection by means of a trade mark registration in each country in which protection is required. There are two exceptions to this:
- A European Community trade mark application provides coverage in each country that is a member of the European Community, which is most of Western Europe. A European Community trade mark application provides a cost-effective means of protecting a trade mark in Europe.
- The Madrid Agreement and Madrid Protocol provides for protection in each country that is a party to the agreement, by filing a single trade mark application.
Do all countries protect trade marks that are in use but are not registered?
No.
In many countries (eg. Japan and Continental Europe) protection for a trade mark is gained by registration only. Use of a trade mark does not generate any rights in such countries.
When must foreign protection be sought?
Before you export products bearing the trade mark, and before you engage in any negotiations with potential distributors, importers or franchisees in that country. This prevents your trade mark from being misappropriated by another party who may have filed a trade mark application during negotiations. This is especially important in countries, which do not recognise rights arising from use of a trade mark.
Does my Australian trade mark application provide any protection outside Australia?
Yes, for a limited period of time.
If a trade mark application is filed in a foreign country within six months of the date of the first Australian trade mark application, the foreign application will have priority from the date of filing of the Australian trade mark application. Therefore, if any other trade mark applications are filed in that country after that priority date, such other trade mark applications will not affect the validity of your foreign trade mark application.
It should be noted that this gaining of priority applies only to those countries that are signatories to the Paris Convention (almost all countries in the world are signatories). If protection is required in a country that does not grant priority rights, applications should be filed before you export products bearing the trade mark, and before you engage in any negotiations with potential distributors, importers or franchisees in that country.
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