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:
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.
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.
It sends a message and acts as a
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
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.
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.
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
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
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.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
As a licensor or a licensee, here are some tips you should consider when negotiating your next licence agreement.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).