IP Law - Intellectual Property - Trademarks

What is a “Trade Mark”?

The term “Trade Mark” is defined in the Trade Marks Act as “...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.”

What can be registered as a trade mark?

Section 6 of the Trade Marks Act defines “sign” to include the following or combination of the following:

As can be seen above, the range of signs that can be registered as a trade mark is broad however the Regulations have provided that certain signs may not be registered. These include Austrade,

C.E.S., Olympic Champion, Repatriation, Returned Airman, Returned Sailor and Returned Soldier.

What are the benefits of trade mark registration?

It is not mandatory for trade marks to be registered and the owner of the unregistered trade mark may issue proceedings against the infringing party under the Trade Practices Act or State equivalent or the common law grounds of “passing off”. This method may be complicated, time consuming and expensive due to the nature of the evidence to be adduced and the added burden of the owner being put to proof.

The advantage of trade mark registration is that the entry of a trade mark on the Register is prima facie evidence of any particular or other matter entered in it. The owner may commence proceedings in a prescribed court for trade mark infringement if a person has used as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered. This process is relatively simpler and more cost effective.

How do I register my trade mark?

Trade mark registration may be complicated and depend on a variety of things. A trade mark can be a valuable commodity and it is therefore understandable that literally thousands are registered each year. In this respect, the first thing to do is to conduct a comprehensive search to identify whether your mark is identical or similar to a mark that has been registered.

If there is nothing similar, the following step will be to identify the type(s) of goods or services under which the trade mark will be registered. Currently there are 34 classes of goods and 11 classes of services.

An application for trade mark registration must be made in accordance with the Trade Marks Regulations and must be made by the person claiming to be the owner of the trade mark. In addition, one of the following conditions must also be satisfied:

1. the person is using or intends to use the trade mark in relation to the goods and/or services;
2. the person has authorised or intends to authorise another person to use the trade mark in relation to the goods and/or services;
3. the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services.