Focus: Brand protection and trade mark registration
Services: Commercial, Intellectual Property & Technology
Industry Focus: Energy, Resources & Infrastructure, Financial Services, Medical & Pharmaceutical, Property, Insurance

In Australia, a trade mark could be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or a combination of these, used or intended to be used in the course of trade to distinguish the goods or services of one person from the goods or services provided by another person.

With ever-increasing competition for time and resources, why should seeking and securing trade mark registration in Australia be worthy of a mention in the boardroom?

Here are five reasons:

  1. It is an asset

A trade mark registration is a commercial asset that can be bought, sold, assigned, licensed, used as security and, through proper use and investment, can be extremely valuable.

  1. It provides a monopoly

Registration grants the owner of a trade mark a monopoly within Australia to exclusively use, license or sell the trade mark for the goods or services for which protection has been achieved. Provided a registered owner uses the trade mark in relation to the goods or services for which registration has been obtained and attends to renewal every 10 years, for a relatively small outlay, the owner gains a potentially unlimited monopoly to use the trade mark for the registered goods or services.

  1. It sends a message and acts as a deterrent

A trade mark registration clarifies proprietorship, acts as a 'badge of origin' for Australian consumers, and indicates to the Australian marketplace that a company takes its intellectual property seriously.

Only registration of a trade mark enables its owner to use the ® symbol. Use of the ® symbol places the Australian market on notice that the trade mark owner has registered the trade mark and is aware of their trade mark rights. This can serve the defensive purpose of dissuading competitors from adopting or seeking to register an identical or a deceptively similar trade mark in relation to the goods or services for which the trade mark has been registered.

It can also deter competitors from adopting or seeking to register a substantially identical or deceptively similar trade mark if they conduct a search of the Australian Trade Marks Register and discover the trade mark registration.

  1. It provides a defence to infringement

As a registered trade mark cannot infringe another Australian registered trade mark, obtaining registration provides a valuable defence to trade mark infringement.

  1. It is a cost-effective and efficient weapon against infringement and can assist stopping counterfeits

When one considers the infinitely more complex and costly exercise of suing under the common law tort of 'passing off' or under the misleading and deceptive provisions of the Australian Consumer Law, a trade mark registration grants the owner of the trade mark an economical, expeditious and relatively straightforward means of taking enforcement action against infringement.

A trade mark registration entitles a trade mark owner to lodge a Notice of Objection with the Australian Customs and Border Control service. This means the Australian Customs and Border Control Service can seize and confiscate counterfeit goods bearing the trade mark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.