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  • Kyard Business Law

Trade Marks

Trade marks are signs used by someone in the course of trade to distinguish their goods or services from anyone else. There are international treaties relating to trade marks that are implemented in Australia by the Trade Marks Act 1995 (C’wlth).


Registering a trade mark is optional but gives a right to be the only person allowed to use the trade mark in relation to the relevant goods or services (or to allow someone else to use that trade mark).


Registration covers the whole of Australia and lasts indefinitely (as long as renewal fees are paid).


Two hundred and fifty years ago, the United Kingdom imposed taxes on the Ace of Spades and required that the specific design be used. Richard Harding, who copied the design, was hanged in 1805 for counterfeiting the duty stamp on the ace of spades.


The consequences for breaching trade marks today are (fortunately) not as severe, but registering trade marks (under the Trade Marks Act 1995 (C’wlth)) remains a deterrent to those who might otherwise breach the rights of an owner of a trade mark.


How to register a trade mark


Trade marks can be registered by the owner themselves online with IP Australia (www.ipaustralia.gov.au) or the owner can seek the help of lawyers or patent attorneys.


There are 45 classes divided into 34 classes of goods and 11 classes for services. By example, caravans fall under class 12 while construction of caravans falls under class 37 and a caravan park will use class 43. Lawyers use class 45. Naturally, some goods or services may fall under more than one class and it is possible to register trade marks across a range of classes. The same word or logo may be used for very different purposes by different people without necessarily causing confusion so that the same trade mark can be registered by different people.


Requirements


A trade mark can take a range of forms (even a smell or a colour) but is usually a sequence of words and often a logo. As a general rule, a “made up word” is a powerful trade mark and using a logo makes it easier to register a trade mark but potentially easier of someone to avoiding infringing the trade mark by using a different logo.


The trade mark must be capable of distinguishing and must in fact distinguish the goods or service of the applicant who must be the true owner of the trade mark. It will not be registered if it is too similar to an existing registered trade mark or if there is evidence to show that someone else has been using it. Sometimes a trade mark is inherently distinctive and sometimes the applicant can show that their use (and extensive marketing) means that the trade mark has become distinctive.


Is there anything that can be done if I have not registered a trade mark?


The Common Law action of “Passing Off” can be used to protect reputation associated with an unregistered trade mark or name but only if the owner can prove:

1. they do have reputation associated with that trade mark or name;


2. actual confusion; and


3. losses arising from the breach.


These can be difficult to prove in Court. For this reason, it is more common for businesses to rely upon misleading and deceptive conduct under Australian Consumer Law and in particular section 18 that states in part:


“18(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.”


Australia does have a system of registering business names but these Laws are intended to enable consumers to identify someone to sue rather than to help protect names.


Some trade marks (particularly those with a detailed logo) may attract copyright protections.


Some key points to know


• Act quickly to register trade mark protection as the date of application to register a trade mark is crucial where more than one person or entity wants to use similar names.


• It is an offence to represent falsely that a trade mark is registered (section 151). For this reason, unless and until the trade mark is registered, the initials “TM” should be used in relation to a trade mark rather than the symbol “®”.

• Always make investigations as to whether a trade mark is being used or has been registered by someone else to avoid not only unnecessary expense but also the risk of being sued.


• It may be possible to oppose registration or even to seek removal of the registration in some circumstances.


• When the trade mark is sold (eg in the context of a sale of business) the contract should expressly note that goodwill in connection with or relating to that trade mark is also sold.


• Act quickly if there is a concern in relation to breach of a trade mark, as delay can mean that a Court will not grant an injunction to stop that breach.


• Consider early whether you will want to protect your trade mark in other countries. This may be desirable even if you have no immediate plans to trade in that country.


• If in doubt, register in more than one class of goods or services.



This article is a brief summary of a complex area that is very much contingent of the precise facts. It is therefore not a substitute for detailed legal advice. While the key concepts have application in other jurisdictions, the relevant Law is that of Victoria as at May 2023.

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