Have you ever wondered what the symbols ™ and ® mean next to words or logos? Any Trade Mark, whether registered or not, can be identified with the symbol ™ . Only Registered Trade Marks can be identified with the symbol ® after having successfully navigated their way through an application filed with a Trade Mark Office.
1. Qualifying For A Trade Mark Registration
Registrations are granted in Australia for eligible trade marks which satisfy the following criteria:
• The trade mark applicant has the requisite standing to apply, and is either the first user of the trade mark in Australia or is the first to apply to register the trade mark, whichever occurs first
• The trade mark application has been filed in the correct class for the correct goods and/or services
• The trade mark is not a common surname or geographical location
• The trade mark is not the same or similar to an earlier filed trade mark that has been registered or is the subject of a pending application in Australia in respect the same or similar goods and/or services
• The trade mark is not descriptive of the goods and/or services applied for and is not a word or combination of words other traders would legitimately wish to use to describe or refer to their similar goods and/or services.
2. Trade Mark Registration Rights
Once registered, the owner of an Australian trade mark registration has, during each renewable period of 10 years, the following exclusive rights in Australia:
• To use their trade mark in relation to their goods and/or services
• To license others to use the trade mark
• To seek legal relief if the trade mark, or a deceptively similar trade mark, is used by an unauthorized person in the course of trading in the same or similar goods and/or services.
3. Enforcement Of Trade Mark Registrations
Consistent with those exclusive rights is the opportunity for the trade mark owner, or licensee, to enforce those rights in court against infringers of the trade mark registration, such as when:
• A competitor or other unauthorized person has commercially used the same or deceptively similar trade mark in relation to the same or similar goods and/or services in Australia.
1. Trade Mark Oppositions (pre-registration)
Trade mark applications, if accepted, but before they are registered, can be opposed by any person on the basis that:
• A Notice Of Intention to Oppose is filed by that person within 2 months of the publication by IP Australia of the acceptance of the trade mark application to begin the opposition procedure.
• The trade mark registration arguably does not satisfy any of the criteria set out in the above section headed “Qualifying For A Trade Mark Registration”.
2. Trade Mark Non-Use Applications
A trade mark registration will be vulnerable to removal from the Register if it has not been used commercially in relation to its specified goods and/or services during any continuous period of 3 years, beginning from 3 years after the date the trade mark is registered, such non-use of the trade mark being:
• No use or no authorised use in Australia as a trade mark, that is, as a badge of origin to indicate trade source
• No use in relation to the goods and/or services for which the trade mark is registered
• No use in good faith or only token use for the purposes of simply protecting a registration from attack for non-use
• No use in a commercial sense for the purposes of trade in the goods and/or services.
3. Court Action To Invalidate a Registered Trade Mark
Trade marks which have been registered can be the subject of revocation proceedings in the Federal Court of Australia, but this is a very costly and time consuming option, for which:
• Specific and detailed advice should be sought from us regarding the prospects for success and the possible option of seeking a negotiated agreement (such as by geographic limitations on the right to use the trade mark) with the trade mark owner as an alternative to litigation
• The same grounds as set out in the above section headed “Qualifying For A Trade Mark Registration” need to be satisfied before the court will revoke a trade mark registration.
The primary purpose of a trade mark is to distinguish the goods and/or services of one business from those of another. Therefore, a trade mark provides a valuable reputational link in the mind of the consumer between particular goods and/or services and the business or trader providing it.