1. Understanding trade mark protection in Australia
What is a trade mark and why protecting it important?
A trade mark is a sign or symbol that is used to distinguish the goods or services of one business from those of another, so protecting your IP and assets is of paramount importance. In Australia, trade marks can be registered under the Trade Marks Act 1995 (Cth) and are administered by the Intellectual Property Government Agency (IP Australia).
What can be trade marked in Australia?
Trade marks can be a word, phrase, logo, or even a shape or sound. They can be used to identify a wide range of products and services, including goods, services, and even events. In order to be eligible for trade mark registration in Australia, a trade mark must be distinctive, meaning it must be able to distinguish the goods or services of one business from those of another.
It is important to trade mark your brand in Australia because it gives you exclusive rights to use your trade mark in connection with your goods or services. This means that no one else can use a trade mark that is identical or similar to your trade mark for the same or similar goods or services. Trade marking your brand also helps to build brand recognition and reputation, as it allows consumers to easily identify and distinguish your goods or services from those of your competitors.
Trade marking your brand in Australia is a relatively straightforward process, but it is important to ensure that your trade mark is eligible for registration and to carefully consider any potential trade mark conflicts. By understanding the trade mark process and taking steps to protect and enforce your trade mark, you can ensure that your brand is properly protected and positioned for success.
Choosing a trade mark is an important step in protecting and promoting your brand. A strong and distinctive trade mark can help to build brand recognition and reputation, and can also make it easier for consumers to identify and distinguish your goods or services from those of your competitors.
2. Choosing a trade mark
Tips for choosing a strong and distinctive trade mark.
When choosing a trade mark, it is important to consider the following 5 factors:
- Distinctiveness: A trade mark must be able to distinguish the goods or services of one business from those of another. This means that it should not be too similar to existing trade marks or be descriptive of the goods or services being offered.
- Relevance: A trade mark should be relevant to the goods or services being offered. For example, a trade mark for a sports clothing brand should be relevant to sports and athletics.
- Simplicity: A simple trade mark is easier to remember and recognize. A trade mark that is too complex or convoluted may be difficult for consumers to remember and may not be as effective at building brand recognition.
- Protectability: It is important to choose a trade mark that is eligible for trade mark registration. This means that it must be distinctive and not too similar to existing trade marks.
- Future-proofing: Consider whether your trade mark will still be relevant and effective in the future. A trade mark that is too trendy or specific to a particular time period may not stand the test of time.
Avoiding trade mark conflicts and disputes.
It is also important to research existing trade marks to ensure that your chosen trade mark does not conflict with any existing trade marks. Conflicts can lead to trade mark disputes and may result in your trade mark application being rejected.
By carefully considering these factors and taking the time to research and choose a strong and distinctive trade mark, you can ensure that your brand is properly protected and positioned for success. Consider the following example.
Kitkat trade mark battle, a four-fingered crisis that traversed nearly two decades.
The world of chocolate is not just sweet and delicious. This may come to you as some kind of surprise, but chocolate is a highly litigious arena, which has its fair share of legal battles. One such battle was the long-lasting trade mark dispute between Nestle’s KitKat and Cadbury’s Kvikk Lunsj over the distinctive four-fingered shape of the KitKat bar.
This legal fight, which spanned nearly 2 decades, with twists and turns like a horror movie, finally came to a close in 2018. The case had a high cost associated with it, and in the end, Nestle’s appeal was denied and the court ruled that the bar was not distinctive enough to warrant a European-wide trademark. This meant that the four-fingered shape of KitKat was no longer protected as a trade mark throughout the European Union, but only in member states like Germany and Italy where Nestle had obtained a national trade mark.
This court case brought to light the difficulties in protecting shapes as trade marks in the EU. Compared to words, phrases, colours or logos, the bar for recognition and brand awareness for a shape trade mark is significantly higher. Therefore, new trade mark applicants may want to consider creating a mark that is inherently distinctive, rather than relying on acquiring protection through use as it is seen in the case of KitKat.
3. Applying for a trade mark in Australia
The trade mark application process.
To apply for a trade mark in Australia, you must first determine whether your trade mark is eligible for registration. A trade mark must be distinctive and must not be too similar to existing trade marks.
Once you have determined that your trade mark is eligible for registration, you can begin the trade mark application process by completing an online application form on the IP Australia website. You will need to provide details about your trade mark, including a description of the goods or services it will be used in connection with, and any relevant classifications. You will also need to provide a copy of the trade mark itself, which can be a word, phrase, logo, or even a shape or sound.
The trade mark application process can take several months, as the trade mark will be examined to ensure that it meets the eligibility requirements for registration. If your trade mark is approved, it will be advertised in the Australian Trade Marks Journal, and any interested parties will have a chance to object to the registration. If there are no objections, your trade mark will be registered.
The costs involved in trade marking your brand in Australia.
The costs involved in trade marking your brand in Australia depend on a number of factors, including the type of trade mark you are registering and the goods or services it will be used in connection with. Basic trade mark application fees start at $250, with additional fees for each additional class of goods or services. It is also possible to hire a trade mark attorney to assist with the trade mark application process, which may involve additional costs.
By understanding the trade mark application process and the costs involved, you can ensure that your brand is properly protected and positioned for success in Australia.
4. Applying for a trade mark in Australia
How to ensure your trade mark is protected.
Once your trade mark is registered in Australia, it is important to take steps to protect and enforce your trade mark rights. This can help to ensure that your trade mark is not used by other businesses in a way that is likely to confuse or deceive consumers, or that dilutes the distinctiveness of your trade mark.
To protect your trade mark, it is important to use it consistently and accurately, and to ensure that it is used only in connection with the goods or services it has been registered for. It is also a good idea to monitor the use of your trade mark by other businesses and to take action if you believe your trade mark rights are being infringed.
What to do if someone infringes on your trade mark rights?
If you believe that your trade mark rights are being infringed, you may be able to take legal action to stop the infringing use and to seek damages. In order to take legal action, you will need to prove that you have trade mark rights and that the other party’s use of your trade mark is likely to confuse or deceive consumers or dilute the distinctiveness of your trade mark.
5. Maintaining your trade mark
The importance of keeping your trade mark up-to-date.
It is also important to keep your trade mark up-to-date by renewing your trade mark registration when it expires. This will help to ensure that your trade mark remains in force and that you can continue to use it to protect and promote your brand.
By taking steps to protect and enforce your trade mark, you can ensure that your brand is properly protected and positioned for success in Australia. There are a few key steps you can take to maintain your trade mark:
- Use your trade mark consistently and accurately: It is important to use your trade mark consistently and accurately in order to maintain its distinctiveness and protect your trade mark rights.
- Monitor the use of your trade mark by others: Keep an eye out for any businesses that may be infringing on your trade mark rights, and take action if necessary to stop the infringing use.
- Renew your trade mark registration: Trade marks must be renewed every 10 years in order to remain in force. Be sure to renew your trade mark registration before it expires to ensure that you can continue to use it to protect and promote your brand.
- Keep your trade mark up-to-date: If you make any changes to your business or the goods or services you offer, you may need to update your trade mark to reflect these changes.
By taking these steps to maintain your trade mark, you can ensure that it remains a valuable asset for your business and continues to effectively protect and promote your brand.
Conclusion
Protect your brand and stand out in the market with trade mark protection in Australia. Learn the ins and outs of trade mark registration and how to choose and enforce a strong trade mark.
Need help with the process? Contact Lazarus Legal for legal advice, review, and assistance with trade mark registration.
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Mark Lazarus
Mark Lazarus, the visionary behind the business and the fresh blood of the Lazarus Legal team, Mark (or Laz as he is often known) owes much of his success to his past experiences. And he’s made it his personal goal to bring that wisdom and formula to the firm.
