Registered Trade Mark
What is a registered trade mark?
As the name suggests, a trade mark is a mark (that can be a symbol, word, color, shape or a smell) that distinguishes the goods or services of a trader from the goods or services of other traders.
A trade mark identifies the source of goods or services. For example, McDonalds, iTunes, the colour green used by BP, the shape of the Coca-Cola bottle, the Hi-Fi (live music venue) and Powderfinger (band name) are all registered trade marks – only the owners or licensees of these registered trade marks can use and exploit them for the goods or services in respect of which they are registered.
It is a common misconception that registration of a business or company name gives proprietary rights in that name. This is not the case. Registration of a business or company name does not confer positive rights to exclusively trade under that name. It is a registered trade mark that secures the proprietary rights in a name, sign or logo (or other unique identifier of your good or service). Furthermore, the searches undertaken in the course of seeking registration will alert a trader to the existence of a similar trade mark that is registered or in the process of registration. It is far preferable for the trader to be aware of this possible threat at an early stage.
Must a trade mark be registered?
A trader is free to use a trade mark without seeking its registration. If a reputation is developed in a trade mark as a result of its use or promotion, then rights in the mark will arise at common law. However, proof of a reputation in Australia is a precondition to enforcing such rights. Obtaining the evidence to prove your reputation in Australia can be timely and costly. A registered trade mark owner does not need to prove its reputation to have protection for its trade mark across Australia. This is the most significant benefit provided by registration of a trade mark.
Traders operating with an unregistered trade mark sometimes choose to identify their mark with the ‘unregistered trade mark’™ symbol. This symbol places others on notice that the mark is being used as a trade mark.
What are the benefits of registration?
Brand owners indicate that their trade mark is registered by using the ‘registered’® symbol. Use of the symbol puts others on notice that the trade mark owner is aware of its trade mark rights and is active in protecting them.
By registering your trade mark you obtain positive statutory rights, including the following:
- • Automatic rights under the Trade Marks Act 1995, including the right to prohibit others from unauthorised use of your trade mark or a trade mark that is substantially identical or deceptively similar to your mark;
- • A tangible right that can be assigned or licensed for value; and
- • The marketing advantage of indicating that the trade mark is protected by registered rights.
Is my trade mark able to be registered?
A trade mark can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these.
To be registrable, the trade mark must be inherently adapted to distinguish your goods or services from those of others. For this reason, you will find it very difficult to register a trade mark that denotes the kind, quality, intended purpose or value of the goods or services; or comprises a common surname or is a geographical name.
What can I do if my registered trade mark is used without permission?
The owner and exclusive licensees of a registered trade mark have a variety of remedies available to them under the Trade Marks Act 1995 including the following:
- • restraining orders;
- • compensatory damages including for loss of profits and loss of reputation;
- • additional damages for flagrant infringement; or
- • an account of the infringer’s profits.