Trade Marks.

The system of registering trade marks was devised in order to avoid the need to show reputation. As mentioned above, it is possible to protect a trade mark that has not been registered. In order to do so, it would be necessary to show that the trade mark had developed a substantial reputation. This can be difficult and expensive, particularly in court.

The fact that a trade mark is registered is sufficient basis to prevent unauthorised use of the trade mark. It follows that relying on a registered as opposed to an unregistered trade mark can save significant legal costs when enforcing the right of ownership of the trade mark.

It is generally recommended that trade mark searches be conducted to identify any potential conflicting marks that may be cited against the registrability of a trade mark application.

Pre-filing searches may also be considered to understand any potential freedom to operate issues, and in particular whether use of a trade mark of interest would potentially infringe the trade marks rights of another trader.

Please note that the registrability of a foreign filed trade mark is assessed against the trade mark register of the respective jurisdiction. As such, there may be marks that are an impediment to registration of your trade mark that were not cited during prosecution of an Australia application. Prior to filing the foreign application/s, you may wish to consider conducting a search of the trade marks register in one or more overseas countries of interest. A search will provide an indication of whether there are potential conflicting marks that may be cited against a foreign-filed application, and whether commercial use of the trade mark of interest may infringe the rights of another trade mark owner in the foreign jurisdiction of interest.

A trade mark application will be rejected if the examiner is of the opinion that the trade mark is not capable of distinguishing the designated goods or services from the goods or services of other persons. Thus, it is difficult to register words and logos that are descriptive of the goods or services they are used to sell. This difficulty translates into increased costs and delays when attempting to obtain registration. As a rule of thumb, if other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same trade mark, or some trade mark nearly resembling it, upon or in connection with their own goods or services, an objection will likely issue from the examiner on the basis that the trade mark is not inherently adapted to distinguish your goods and services.

Another potential impediment to trade mark registration is the existence on the register of a trade mark that is substantially identical, or deceptively similar to, the applied-for trade mark for the same or closely related goods and/or services. This requirement is intended to protect the public from any potential confusion in the marketplace. There are mechanisms to overcome a cited trade mark registration such as providing evidence that the applied-for trade mark has acquired a reputation.

Note that trade mark registration is at the discretion of the authorities and there may well be objections, in addition to those mentioned above, that hinder registration.

Once a trade mark has been selected, the next decision will be how the trade mark is going to be applied. This will determine the number of classes in respect of which the trade mark application is to be filed. The number of classes will determine the official fees that you will need to pay when filing the trade mark application.

As soon the classes have been selected, it will be necessary to construct descriptions that are to accompany each class. Note that a registered trade mark does not extend to all the goods or services in a particular class, but rather to the description that accompanies each class. So it is important that this step be carried out carefully. It is not possible to add goods or services that are not broadly covered by the descriptions as filed, so it is better to go a little overboard, rather than skimp on the description.

That done, the application can be filed. Once filed, it will take about 9 to 12 months to receive an examination report. On the other hand, a Notice of Acceptance will issue if the examiner finds that there are no conflicts with existing trade marks on the register and that the trade mark is “distinctive”.

Acceptance of an application is advertised for 2 months once it has been accepted. During that time, any third party can oppose the registration of the trade mark. A trade mark application may be registered at any time within the six month period after advertisement of acceptance.

The ‘R’ symbol can be applied upon registration of the trade mark. It is an offence to use the ‘R’ symbol or otherwise signify that a trade mark may be registered without official registration of the trade mark.

Trade mark registrations have an unlimited life, provided renewal fees are paid every 10 years. Note, however, that a trade mark registration can become subject to removal from the register if the trade mark is not used during the course of trade in respect of the claimed goods and/or services.

Under the Trade Marks Act 1995, the owner of a trade mark is the party that uses, or controls use of, the trade mark. The Applicant of a trade mark application must be the current user or must have a bona fide intention to use the trade mark, or to authorise a third party to use the trade mark. Control of use of a trade mark includes exercising effective practical control over use of the mark in respect of the goods and/or services, such as exercising quality control over goods or services to which the mark is applied by another entity or exercising financial control over the relevant trading activities of the other entity.

Furthermore, if an Applicant is not the true owner of the trade mark, or cannot claim ownership of the trade mark when an application is filed, this defect cannot be cured post-filing. Consequently, failure to properly identify the correct owner of the mark at the time of filing the application can lead to the irrevocable loss of the trade mark.

The owner of a trade mark must have a legal personality. The owner may be an individual, a company, a partnership (including Australian limited liability partnerships), an incorporated club or association, an incorporated entity or any combination of these who together own a trade mark. Applications lodged in the name of trusts, business names, trading styles, unincorporated associations, clubs, partnerships or societies will not be allowed since these entities do not have a legal personality.