January 21, 2016

5 Fast Facts about Trade Mark

Trade marks are a critical component of any business. This article covers five fast facts about trade marks and how they can be leveraged to benefit your business.

1. What is a trade mark?

A trade mark is a ‘sign’ that is used by one trader to distinguish their goods or services from those of other traders.

A trade mark traditionally consists of a word, a logo or a combination of words and logos, but it can also include 3D shapes, colours, scents, sounds or movements (known as ‘non-traditional’ trade marks).

Examples of registered non-traditional trade marks include:

  • the colours green, yellow and white applied to BP petrol stations;
  • the scent of eucalyptus applied to golf tees;
  • the orchestration of the Twentieth Century Fox opening sequence (sound mark);
  • the triangular shape of Toblerone chocolate bars (3D shape);
  • Toyota’s ‘oh what a feeling’ jump (movement mark).

2. How does a registered trade mark benefit my business?

Once registered, the owner of a registered trade mark enjoys a range of legal and commercial benefits that are not available to traders without registered trade marks.

A registered trade mark gives the owner:

  • the exclusive legal right to use, sell, and license the use of, their trade mark for the goods and services recorded in the registration; and
  • a statutory right to prevent others from using a similar trade mark in connection with similar goods or services.

In many countries, a registered trade mark gives its owner a statutory defence against infringement of another trader’s trade mark.

Registered trade marks are owned as property, which means they can be sold, licensed and transferred to third parties. Registered trade marks can make a business more valuable to a prospective purchaser.

3. What about business names, company names and domain names?

Business names, company names and domain names are all important forms of registration. However, none of these types of registration confer proprietary rights or protections in the registered name.

A registered business name, domain name or company name can infringe a registered trade mark. In addition to monetary compensation, a court may order that an infringing name registration is to be cancelled or transferred to the trade mark owner.

Despite registering a business name, domain name or company name if the chosen name infringes a registered trade mark the trader may be forced to rebrand.

Protection in a business name, company name, domain name or unregistered trading name is only attained through establishing consistent use and reputation over time. This can be more difficult – and expensive – to prove in a dispute or court setting.

4. How is a trade mark registered?

A trade mark can be registered by applying to the trade marks office.

Each country has its own trade marks office. There are also some regional trade marks offices, such as OHIM (Office for Harmonisation in the Internal Market) in the European Union and OAPI (Organisation Africaine de la Propriété Intellectuelle) in French-speaking African countries. These offices can grant multi-country regional trade marks.

For maximum protection, you should consider registering a trade mark in each jurisdiction in which you intend to trade.

There are some differences in law, practice and procedure in each territory, but an application usually undergoes examination by the trade marks office to ensure it meets formality and legal requirements. It is then publicly advertised to allow third parties to oppose registration. Once the application passes all of these stages, it is eligible to be granted registration.

As a general rule, a trade mark must be distinctive. In other words, a trade mark is more difficult to register if it is:

  • descriptive of the goods or services for which protection is sought; or
  • similar to existing trade marks already on the trade mark register.

In Australia, the registration process takes about 6 to 7 months if no complications arise with the application. International registrations usually take longer to complete, depending on the jurisdiction.

5. How long does a trade mark registration last?

In most jurisdictions, a trade mark registration lasts for 10 years, but registration can be renewed indefinitely for further periods of 10 years.

Registered trade mark owners should ensure they make continual use of their trade marks to avoid the risk of the registration being cancelled for non-use.

The oldest continuously-registered trade mark in Australia (Registered Trade Mark No. 1) dates back to 1906.