What is a trade mark?
A trade mark identifies a product or service and helps to distinguish it. It is your brand – your identity. It must be capable of distinguishing your goods and services from those of other people. A trade mark is a type of intellectual property (IP) and forms part of the good will of a business.
Usually, a trade mark is a word, phase or logo, but it can also be a letter, number, picture, sound, smell, shape, colour, movement or aspect of packing or a mix.
Registration
When you register a trade mark you have exclusive rights to use, license and sell the trade mark. Registered trade marks can bear the ® symbol.
Registration of a business name, company name or domain name does not give you the exclusive rights to use these names. It does not stop others using the same or similar names.
Having a registered trade mark gives you the right to take legal action against others if they use your trade mark without your consent (trade mark infringement).
Non-use
Even if you have registered your trade mark, you must use it or it can be removed from the register on the grounds of non-use.
Common law trade mark
There is no legal obligation to register a trade mark, but if you use a trade mark that someone has already registered they can take legal action against you. If a trade mark has been used (without registration) for a sufficient period of time and built up a significant reputation then the user may be able to stop others using that mark.
Assignment of trade marks
You can assign the ownership in a trade mark, for example if you sell your business you would assign the trade mark to the new business owner.
Class of goods or services
When you register a trade mark you register it in a specific class of goods or services (or several). There are 45 different classes, 1 to 34 for goods, and 35 to 45 for services. For example, class 25 is for clothing, footwear and headwear, and class 41 is for education, providing of training, entertainment, sporting and cultural activities.
Changes to your trade mark or class of goods or services
Sometimes a trade mark changes over time and it is important to make sure that these changes don’t require registration of a new trade mark. This is especially important with logos or pictures. It is usually a good idea to register the word as well as the logo (where it is a combination of a logo and word) to provide the best protection and protect your word trade mark if you do change your logo in the future.
Sometimes the goods or services sold under the trade mark may change or increase and require the trade mark to be registered in different or additional class.
The IP Australia website has a wealth of useful information and you can search the trade mark register for similar goods and services to your own to see what classes they are registered in. You can also do preliminary searches for pre-existing trade marks when you are working through the process of creating your own trade mark.
For legal assistance please contact please contact Fleur Craig of Armour-Craig Legal on (03) 5636 4986 or fleur@armourcraiglegal.com.au.