Trademark registration (TMR) can be used to stop others using deceptively similar trademarks to draw away your customers.
The TMR system is intended to combat counterfeiting and improve market efficiency by reducing confusion between competing traders. A trademark (TM) can be any sign that distinguishes products or services of one trader from those of another.
Words and logos are common forms of trademarks. For example, we trade under the word trademark WADESON and also under our three brushstrokes logo. Often the word and the logo are used in combination.
Beyond words and logos, more exotic forms of trademark include the shape of a product, a particular colour, a sound or even a smell. An everyday example of a more exotic mark is a red-tipped eco-banana from the supermarket.
TMR is separate from business-name registration, company-name registration, and domain-name registration. Each form of registration is separate – business, company and domain-name registrations do not give you the right to use a particular sign as a trademark or to stop others using it as a trademark.
It is not compulsory to register your trademark. That said, registration is typically a simple, inexpensive process that reduces the risk of unknowingly infringing somebody else’s rights and dramatically improves your situation if another trader enters the market with a trademark that is identical or deceptively similar to yours. Even if your trademark has been in use for a long time, registering it will make any dispute far easier (cheaper) and more likely to be won. With a TMR, you only really need to prove the other trader or counterfeiter has infringed. Without one, you have to rely on ‘passing off or misleading and deceptive conduct’ law, which means you have to prove you have a reputation, consumers were misled, you suffered damage as a result of the other trader’s actions etc. This is a lot easier said than done. If you have a short trading history, the difficulty level is extreme.
The initial step of sending a ‘cease and desist’ letter can be the only and last step needed to stop an infringer if you can show a TMR – because the case is easier for you to win. Without the TMR, they can quite likely ignore you, as proving your case will be far harder.
TMR starts by filing an application with the Australian Trademarks Office, including details of the goods and/or services to be covered by the registration.
The Trademarks Office will assess your trademark on various criteria, and then compare it to existing registrations for those goods and services. Unless it is descriptive of the products or services, or identical with or deceptively similar to an existing trademark, your trademark will likely be accepted and registered. If the Trademarks Office raises an objection, you can argue the point.
The goods and/or services should be selected carefully. On the one hand, the registration will not be effective against a trader using a trademark on unrelated goods or services. On the other hand, a longer list of goods and/or services may increase the cost of registration, increase the risk of Trademarks Office objections and increase the risk of the trademark being de-registered if you do not then use the trademark on those goods or services.
TMR is a deceptively simple process. Many attempt it without the aid of a trademarks attorney. That said, be warned that the process is not as simple as it appears. We are routinely called upon to advise on TMRs that have potentially invalidating problems, e.g. where the selection of goods and/or services is less than ideal, making the TMR difficult to enforce. We also see frequent examples of easily overcome objections that were not challenged or addressed.
Belinda Wadeson, Principal, Mechanical Engineer, Patent and Trademarks Attorney