What is a trade mark?

Trade marks exist so that the goods and services of one entity can be distinguished from another. They are a symbol, a sign, a badge, and/or a mark that identifies a particular quality that is attributed to that good or service. A trade mark can be a name, packaging, a scent, or a jingle associated with any product or service.

Four functions

Trade marks essentially have four functions:

1. A quality indicator

2. A badge of origin

3. A means of advertising

4. An investment vehicle

Registration is not automatic

Registered business, company, and domain names unfortunately do not give you any proprietary rights. The best way to obtain a proprietary right and protection is through trade mark registration. It is also extremely important to note that even if you have a registered business, company, or domain name, you do not have an automatic entitlement to use that name as a trade mark.

Registration is geographical

People in other states, provinces, districts, territories, and countries may have registered the same word(s) as their business name. Fortunately though, if you have a registered trade mark for that business name, you may be able to take action against the owner if the business name is used for goods and services covered by your trade mark registration. 

Registration protects your rights

When a trademark is registered it is given a statutory right that is exclusive to the registered party in relation to their distinctive sign. Many things can be trade marked. Once you have statutory protection of your trade mark you have exclusive use of it in the classes of goods and services for which it is registered for an indefinite period, as long as you renew, use, and trade. Renewal takes place every 10 years.

Next Steps...

Before you apply for a trade mark, three things must be taken into consideration:

1. Is a trade mark right for you?

2. Is it suitable as a trade mark?

3. What are the benefits of a trade mark?

Is a trade mark right for you?

Are you or your company/organisation even eligible for a trade mark? If you want to own a trade mark you need to be one of the following:

• a company
• an individial
• an incorporated association
• more than one of these, if there is more than one owner

Other entities that can own a trade mark are:

• an unincorporated association (which can only apply for a collective trade mark)
• a body existing under legislation

Requirements

There are several requirements that the applicant must also meet,  including:

• they can’t be a trading or business name
• they should be the owner(s) of the business registration
• registration should be in the corporation's name (if owned by the corporation) and not in the name of directors or shareholders
• in the case of trusts, it should be in the name(s) of trustee(s) rather than the trust name

It is also important to note that if the trade mark is to be used by a corporate entity that is about to be formed, you can assign the trade mark to the new entity once it has been established.

a trademark search is key

Another extremely important point to make regarding whether a trade mark is right for you, is that the trade mark is most certainly yours! You can't use another person’s trade mark as your own. This is known as passing off, and is an offense in most countries. You need to be sure that the mark is yours and that you are not using a mark owned by someone else. The relevant searches need to be conducted to ensure that your marks for your specific classes of goods and/or services are eligible for registration.

2. Is it suitable as a trade mark?

Is it suitable as a trade mark?

Common and Prohibited

In order to register a trade mark, the mark should not be a common or prohibited sign. One of the first things that a trade mark examiner will look at when deciding if your mark is registrable or not, is whether or not it is common or prohibited. This means that it cannot contain a phrase that is commonly used, or be a descriptive term.

Descriptive Terms

Examples of descriptive terms for goods and services would be COOLING for air conditioners, POTATO for chips, or AIR for airline services. Examples of commonly used words or phrases for goods and services could be BRIGHT & CLEAN for washing detergent or SPEEDY for express courier services.

Surnames

Also, surnames that are deemed common cannot be registered as a trademark for specific goods and services. For example, in Australia if a surname is listed more than 750 times on the surname database, it cannot be used as a trade mark for specific goods and services.

Common Place Names

Trade marks can’t be registered in association with common place names. This means that the names of cities, towns and suburbs cannot be registered in association with particular goods and services. For example you couldn’t register SEATTLE for coffee or MELBOURNE for financial services.

Abbreviations, acronyms, etc.

Trade marks that contain abbreviations, letters and numbers, and acronyms that are already commonly used in relation to particular goods and services, such as clothing sizes and medical equipment acronyms, are also not registrable.

Obviousness

You also can’t register a trade mark that is obvious. For example, a cup of coffee for a coffee brand, or a photograph of a dog for pet food are extremely obvious. However this can be overcome, or made easier to register if you combine something common with something less common, such as an image and a phrase. This is why a logo for a coffee brand can include a cup of coffee, so long as the the logo as a whole is unique.

Exceptions for Geographical names and surnames

It is also very difficult to register a geographic name or popular surname unless it has been used for an extensive period of time. The first test that will be conducted when you apply for a trade mark is that the examiner will look at whether or not other traders in that industry will also have a valid reason or need to use that mark to describe their goods and services.

Names of places can be quiet difficult to register as they are likely to have an association with a particular good, service, or industry. For example, Chiba in Japan is known for peanuts, and Detroit in the United States is known for motor vehicle production and others in the field would have a legitimate right to register a trade mark in association with these names.

If, however, you can prove that you have been using your trade mark and it functions as such in the market place then you may be able to register it, provided you give evidence of its use and other materials in support of it.

Prohibited signs

Many countries are party to the Paris Convention, which prohibits certain protected signs from being registered as a trade mark. These include, but are not limited to, the following:

• armorial bearings
• flags 
• emblems
• official signs
• hallmarks
• abbreviations and names of international intergovernmental organisations.

3. What are the benefits of a trade mark?

What are the benefits of a trade mark?

Brand Identity

Your trade mark is your brand's identity, and an integral marketing tool. It can be one of the the most valuable assets that a successful company has. As your business grows so does the value of your trade mark.

rights

Once you have a registered trade mark you have various rights given to you in relation to that mark, for example:

• You can have exclusive use of your trade mark in relation to the goods and services it was registered for, it becomes your brand, the one and only in relation to the goods and services listed in the registration; 
• You can authorise other people exclusive use of your trade mark in relation to the goods and services it was registered for;
• You can sell your trade mark; 
• You can protect it in the country that it is filed in if some one else’s goods and services are infringing it; and
• You may be also in a good position to defend your trade mark from being used on the same, or similar goods and services as those for which you have obtained registration. 

the ® symbol

After successful registration of your trade mark you should place the ® symbol immediately adjacent to your trade mark. This allows other traders to see that you have the trade mark registration and it also aids in the protection of your IP. You should only use the ® symbol if you have a registered trade mark. If you have registration in another country and you want to use your mark in another jurisdiction you can use the ® symbol, however the country of registration must be clearly shown close to the ® symbol. If you do not have a trade mark registration you can use the ™ symbol. This will afford you some rights, however they’re nowhere near as strong as trade mark registration. 

Use it or lose it

The most important thing to remember is that you must use your mark in the course of trade to keep your registration. If you do not use it, it can be removed for non use, thereby allowing someone else to register it.

We can Help

Trademarks are one of the strongest forms of intellectual property rights granted. If you are interested in seeing whether or not your distinctive sign can be trade marked contact us for some initial, obligation free advice.