Trade Mark Law

In Australia trade mark law is based on the Trade Marks Act 1995 and is administered by IP Australia otherwise known as the Trade Marks Office.

Trade Mark Use

In Australia we have adopted the British system of trade mark law, namely that rights in a trade mark can be established either by using the trade mark or by registration of the trade mark with the Australian Trade Marks Office.

If you have used your trade mark but not yet applied to register the brand then under our common law system you are still recognised as having acquired the right to stop others using the trade mark even though it is not registered. The remedy for a breach of this right is an action for Passing Off.

You cannot sue for trade mark infringement without having a registered trade mark.

A Passing Off action tries to stop someone else using your trade mark which you have acquired a reputation in. This means that your trade mark must be fairly well known in the marketplace so that someone else using a similar trade mark would likely cause confusion amongst consumers, misrepresentation, or injury to your reputation.

The protection provided under common law given to an unregistered trade mark is based on the reputation in the brand within the marketplace. This is sometimes difficult to prove and it is much easier to produce a Trade Mark Registration Certificate to prove ownership of the trade mark.

If you want protection under the Trade Marks Act then it is best to officially register the trade mark by filing a trade mark application with the Trade Marks Office. Once registered, the registration itself becomes very powerful in preventing others from using your trade mark or even a similar trade mark for your particular goods and services. Once registered it means that you own the trade mark – end of story! You don't need to prove prior use or market reputation at all. The only two exceptions are if you stop using the trade mark or if you don't renew the trade mark registration (after 10 years!).

The Act describes what can be registered as a trade mark, describes the process and procedure for applying to register a trade mark, opposing a trade mark application, or starting infringement action over another person using a similar trade mark to your trade mark.

The Act provides a strict regime for trade mark registration and it may not always be possible to register a mark with IP Australia. This is because the trade mark must be distinctive (think unique) to the goods or services. There are also some marks that cannot be registered as trade marks (such as the RED CROSS symbol or words, OLYMPIC CIRCLES, COUNTRY FLAGS, marks suggesting ROYAL PATRONAGE or offensive marks).

The trade mark you use or register must not be misleading such as ORGANIC PETROL, HEALTHY VODKA. You also cannot register signs that other people are using for your particular goods or marks that suggest geographical origin.

If your trade mark is unique to your goods or services then it should be possible to get it registered.

If a new trade mark is being contemplated for a new product or service then we recommend that you obtain a professional search of the Trade Marks Register for any identical or similar trade mark registrations that would stop your use of the trade mark and also a search of the common marketplace for any unregistered marks in use.

Perhaps you are wondering why you should register your trade mark if you have been using the mark for sometime as an unregistered trade mark and therefore potentially you have acquired some common law protection in the trade mark.

It is not a legal requirement to register your trade mark. However there are a number of significant benefits to registering your trade mark. The main benefit of trade mark registration is that it proves you are the absolute owner of the trade mark.

Having your trade mark registered means you can legally stop someone else from using your trade mark (or even a similar trade mark). Having your trade mark registered also means that it can act as a deterrent to others using your trade mark because the Trade Marks Database is searchable by others. This makes others aware of your existing rights in the trade mark.

Intellectual property is a complex area of law and we always recommend that you seek professional advice on your trade mark protection and or ways to make it stronger.