What is a Trademark?

Section 17 of the Trade Marks Act provides that: A trademark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

The registration of a trademark may be in respect of goods or services of more than one class.

A trademark is a way of identifying a unique product or service. A good trademark distinguishes a business from other traders.

Sometimes referred to as a brand, it can help customers discern the quality of a product or service over that of opposition.

A trademark is a sign used to distinguish the goods or services of one manufacturer or seller from those not produced by that manufacturer or seller. A trademark is not just ‘a logo’. A trademark can be in the form of a word, phrase, letter, number, sound, scent, logo, picture, symbol, shape, colour, aspects of packaging or any combination of these. Particular signs, such as flags and armorial bearings are prohibited from registration as marks by international convention.

A trademark should not be confused with business name, company name, domain name or design. The Intellectual property (IP) rights for a design are different to a trademark. One of the key differences is that a design needs to be unique or new to be registered and a trademark does not.

The concept of intellectual property is familiar to most practitioners – certainly many will be experienced in transferring IP such as domain names, business names, and trademarks during the business conveyancing process. However, the importance of trademark registration is often overlooked. Once an application is registered the owner obtains an Australia-wide monopoly over the rights associated with the trademark.

The Act contains certain sections dealing with registration some of the principal ones being as follows:

− Section 19 of the Act provides that a trademark may be registered in accordance with the Act in respect of goods or services or both goods and services.

− Section 22 of the Act sets out the power of a registered owner to deal with a trademark as its absolute owner.

Trademarks are registrable in Australia through IP Australia, the government organisation which administers the legislation governing these rights, and deals with all aspects of application and registration.

IP Australia offer online document preparation and filing for a range of transactions through eSERVICES. Practitioners are required to register for this service. For assistance see the eSERVICES registration help page.

Once a trademark is registered the client obtains an Australia-wide monopoly over the rights associated with the trademark backdated to the date of the application. Section 20 of the Act provides that if a trademark is registered, the registered owner of the trademark has, subject to the provisions of the Act, the exclusive rights to use the trademark and to authorise other persons to use the trademark in relation to the goods and/or services in respect of which the trademark is registered.

A trademark is also an asset which can be sold or licensed and is an essential part of enhancing the value of a business and of any franchising strategy.

It is also usually possible to ride on the coat-tails of an Australian trademark registration, once obtained, to register rights in other countries.

At common law, a person does not acquire any exclusive right to use a name, word or unregistered mark merely because they created it or were the first to use it. Registration of a trademark gives an exclusive right in relation to the class of goods or services in the area in relation to which it is registered. Registration of a business name or company name does not give that exclusive right.

The importance of trademark registration should therefore be emphasised to clients, particularly those who rely on promoting their businesses through the business or company name. They may find that the name infringes someone else’s trademark, in which case they may either have to forego its use or, if the trademark is a later registration than the establishment of their business, be faced with the expense and uncertainty of opposing the trademark application. Apart from the costs of defending any legal action from the party whose registered trademark has been infringed, this may lead to an expensive exercise of re-branding and loss of goodwill associated with the name. Registering an appropriate trademark when setting up a new business is the best way to protect against these situations.

Why Choose Aries?

There are protections for unregistered trademarks, but If you have an idea that you believe can be beneficial and valuable to you in the future, wouldn’t it be for the best to get it trademarked before anyone else gets a similar idea?

The procedure of applying for a trademark can be tedious and getting all the paperwork done can be frustrating. There’s quite a significant contrast in procedures depending on what you’re looking to get patented. Getting a product trademarked is totally different than patenting an idea or a newly invented technology.

With an expert by your side, you ensure that you’re taking the shortest possible route to get all the formalities done and done right! If you consider your idea/product to be really unique and valuable, hiring an expert trademark lawyer will turn out as an investment rather than an expense.

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