Trademarks

A Trade Mark is a "badge" that indicates the origin of the good or service being supplied. Famous examples include the "Qantas", "Woolmark" and "Weet-bix" marks. Good advice should be obtained in relation to selecting, obtaining and maintaining any proposed trade mark.

A mark does not need to be registered for you to have rights in it. If you were the first public user of it in respect of particular goods or services in Australia, and your public use of it has been continuous since then, you may well have at least some ownership rights in Australia.

Of course, it is better to register the mark. You not only have evidence of ownership, but also others formally come on notice of your rights and claims, others are less able to excuse infringement and your rights and remedies against infringement are stronger.

If you do not plan well, and if there is litigation, the litigation can be complex as the law in this area is complex. In my opinion the results are sometimes unpredictable. So good planning is essential.

An unregistered mark give you rights, but obtaining a registered trade mark provides you with a certificate - a certificate of ownership - it is personal property you can potentially sell, and evidence to you and others of your rights.

If an Australian trade mark is infringed, currently, it will often be easier to claim for a breach of trade mark than to claim for breaches of the Trade Practices Act and similar remedies.

Another benefit of registering the trade mark is that it can be transferred by itself to someone else for money. When you own a registered trade mark, you receive a certificate of ownership.

Generally speaking, an unregistered trade mark can only be sold with the goodwill of the business to which it relates. A registered trade mark however can sometimes just be sold on it own (normally by way of an assignment).

The Trade Marks Act changed in 1995, and it is easier to obtain a trade mark now than it was before those changes.

In my opinion, with this ease however, comes a significant disadvantage - higher risks, with some marks becoming potentially worthless or being caught up in litigation.

It is important to obtain good advices, before deciding on your business name or trade mark before you commence your use of them.

Simply because another trader has not applied for or obtained registration of their trade mark does not mean they do not have rights in certain names or signs through that their use of those names or signs.

Therefore, in many situations, it would be advisable to arrange for a "a full availability search" to be carried out, or consider doing one, or seek advice as to the type of strategy that can be used and the risks involved.

While the law of trade marks is technically difficult, it is certainly easier now to register a trade mark than it was before the current laws came in. To obtain registration, a trade mark must not infringe certain technical tests, about which we can assist.

The relevant government department, IP Australia, offers a helpful inexpensive assistance service to help you register a trade mark. Their website home page is at http://www.ipaustralia.gov.au

In my opinion however, it is not appropriate to just use their service without having first obtained some inexpensive legal advice from a solicitor experienced in trade marks. The main reasons being:-

- Registration of a trade mark does not mean you own it - if somebody else really owns the mark, registration will be worthless

- IP Australia's service do not carry out a full availability search

- IP Australia are also the examiners of the application - if they are assisting the application,there are potentially conflicting interests

While it is easier now to obtain registration, it is also potentially easier for a competitor to register a trade mark too.

At this time, I believe that anyone interested in possibly registering a trade mark should use the "best of both worlds" - first obtain some advice about trade marks and IP generally from a solicitor experienced in the area, then if appropriate use IP Australia's services to assist an application.

Trademarks are an interesting area. Good preparation is essential. We aim to provide good, inexpensive legal assistance to people enquiring about, registering or using trademarks.