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Protecting your intellectual property is an essential part of running a business. Trade marks are one of the most common forms of intellectual property as they prevent other people from using it after it is registered.
If your business is thinking of registering a trade mark in Australia, it’s important to understand the laws that govern trade marks and how you can comply with it.
In this article, we’ll go through the key things you need to know about the Trade Marks Act 1995 (the Act) and other important legal considerations.
What Is A Trade Mark?
A trade mark is a way of legally protecting your IP. So, when you register a trade mark, no one else can use it otherwise they’ll face legal consequences.
Lots of things can be trademarked. For example, logos, names, phrases, colours, pictures, sounds and even smells can be trademarked.
Although, you can’t just pick anything and decide you want to trade mark it. In order for something to qualify as a trade mark, it must be distinctive and unique to the business. Furthermore, it cannot be too descriptive or general.
Rules around trade marks are strict in Australia, and is covered by the Trade Marks Act (we’ll touch on this again shortly).
If you register your trade mark and someone else makes an objection to it (for example, if they think your trade mark is too similar to theirs), you may find yourself in a trade mark opposition.
It’s important to know how this process works and what your options are in this situation – we’ll cover this in more detail later.
Why Do Businesses Register Trade Marks?
Trade marks can be used to identify a brand or distinguish you in a competitive market. It’s important for businesses to build an image with their customers and the general public, as having something customers can identify the business with helps move things in the right direction.
This is where a trade mark is useful. When a business has spent time, effort and money into creating a trade mark and marketing it with their products or services, it’s logical to want to keep it protected. After all, you don’t want others using your trade mark and benefit from all your hard work.
Registering a trade mark ensures that you will own it for the next 10 years and no one else in the same industry can use it (even then, you can renew your trade mark with IP Australia).
Trade Mark Registration
In Australia, trade marks are registered through IP Australia. The general process to register a trade mark involves:
- Using the Australian Trade Mark Search to see if your trade mark is already being used
- Doing a TM Headstart Application to avoid receiving an adverse report
- Deciding the classifications your trade mark will fall under
- Completing an application to register your trade mark with IP Australia
- Once the trade mark is approved, it will be published and be up for opposition for two months
- If the trade mark is opposed, the process of submitting evidence will begin before a decision is made
- If the trade mark doesn’t go through opposition, it will be registered and yours for the next 10 years
Do I Need To Use The Trade Mark Symbol?
No, you are not obligated to use the trade mark (™) symbol. In fact, it is entirely optional.
The ™ symbol is usually used to indicate that a particular trade mark is currently undergoing the application process to be registered or the user intends to have it registered in the future.
Once you have a trade mark registered, then you shouldn’t be using the ™ symbol at all.
A registered trade mark can use the ® symbol however, this is also optional.
What Are The Trade Mark Regulations In Australia?
Australia has committed to being proactive with trade mark protection in both its signing of international declarations and domestic laws. As Australia is a member of the World Trade Organisation and has signed the Agreement on Trade-Related Aspects of Intellectual Property Rights, there is a minimum standard Australia must follow which has been adapted in the Trade Marks Act 1995.
Trade Marks Act 1995
The Actestablished the legal definition of a trade mark, registration, examination, oppositions, renewal as well as trade mark amendments and cancellations.
The Act is the primary law regulating how trade marks can be used in Australia and provides a very detailed guideline – it’s good to be familiar with it.
Whether you’re someone registering a trade mark or hoping to oppose someone’s trade mark registration, the Act is something for you to refer to with respect to your rights and your options moving forward.
If you need help understanding your obligations under the Act or how trade marks are protected under the Act, feel free to chat to one of our expert IP lawyers.
Trade Mark Infringement: How Does It Work?
Trade mark infringement is when another party uses the same or a similar trade mark as you. In order for infringement to occur, they also need to be in the same classification. For example, a cosmetic company using a trade mark as a number likely won’t be accused of infringement if a fast food business has something similar.
If trade mark infringement occurs, then the party that believes their intellectual property has been compromised is able to bring forward a complaint which will then be investigated.
Remember – infringement and trade mark protection laws can only be used on those trade marks that have been registered, otherwise, it’s very difficult to enforce any rights.
What Is A Trade Mark Opposition?
We briefly mentioned trade mark opposition earlier. Trade mark opposition occurs during the inbetween stage when a trade mark application has been approved, however, the trade mark hasn’t exactly been registered yet.
The opposition phase requires the trade mark to be published for two months. In this time, anyone that has an issue with your trade mark being registered is able to challenge its registration.
If someone does oppose your trade mark, you will be notified of it (this is usually when you’d be issued with a Trade Mark Adverse Report). After this, the opposing party will have a chance to submit evidence to prove their resistance to the trade mark is valid.
Once they have done this, you will have a chance to respond with your own evidence (this process is done online).
Finally, the opposing party will have another chance to submit evidence, after which a hearing can be requested and a date will be set for it. Otherwise, a hearing officer will simply decide on the matter based on the evidence presented and you will be alerted of the outcome.
The process to register a trade mark can be tricky – from deciding on the right classifications to dealing with potential opposition. As such, we recommend having an expert IP Lawyer to help you through the process.
How Else Can I Protect My Intellectual Property?
There are many different types of intellectual property and different ways to protect it. Not everything can be registered through IP Australia.
There’s no need to worry, though! With the right kind of legal documentation, your intellectual property can still be protected. Other ways to protect you intellectual property include:
- Getting a Non-Disclosure Agreement (NDA) to prevent others who have had access to your IP from revealing it to anyone else
- Having confidentiality clauses in your employment agreements
- Non-Compete Agreements with suppliers and other collaborators
- Treating something as a trade secret and taking active precautions accordingly
- Acting on your copyright entitlements and adding the relevant clauses
As a more general practice, you could also incorporate confidentiality into your onboarding process for new employees. This way, new starters are quicky familiarised with the level of seriousness around confidentiality in the workplace.
Consult An IP Lawyer
Trade marks are an important part of a brand’s identity and many businesses prefer to take the time to protect their intellectual property rather than face the consequences of not doing so.
Intellectual property can get complicated, which is why it’s always a good idea to talk to an intellectual property lawyer. To summarise what we’ve discussed:
- A trade mark is something that can be used to uniquely identify a business
- Getting a trade mark registered means that you will have ownership over it
- If a party does use your registered trade mark, you have the grounds to make a complaint due to trade mark infringement
- Trade marks are registered with IP Australia
- When a trade mark is undergoing registration or you have the intention to register it, you can use the ™ symbol to indicate this (however this totally optional)
- The Trade Marks Act 1995 is the main legislation regulating trade marks
- Trade mark opposition occurs when a secondary party is against your particular trade mark being registered
- There are multiple ways to protect your intellectual property, namely by using the correct legal documentation
If you would like a consultation on the Trade Marks Act, you can reach us at 1800 730 617 or team@sprintlaw.com.au for a free, no-obligations chat.
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