One of a business’ greatest assets is their brand as it is a business’ identity and how customers differentiate them from their competitors. It can include a word, phrase, letter, number, logo or picture.
A common misconception is that the registration of a business name or domain prevents people from using that name but this is merely a regulatory requirement to run a business, it does not prevent people from using similar names, which is why businesses register trademarks.
The registration of trademarks in Australia is governed by the Trademarks Act 1995 whereas, international trademarks are governed in each jurisdiction in which you seek to register your trademark. Fortunately, the Madrid protocol allows you to make an application in Australia and choose the various jurisdiction in which you seek trademark protection.
Trademark Protection in Australia
- A trademark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade. The registered owner of a trademark has exclusive right, from the date of registration, to use and authorise use of the trademark in relation to the goods and/or services against which it is registered.
- A similar good or service is where the goods or service are the same or of the same description as the other good or service. A trademark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
- There are 45 classes of goods and services against which goods and services can be registered. A trademark can be registered for multiple classes. For example, classes include legal services, textiles, vehicles, food, clothing, etc.
Applications for Trademark Registration in Australia
- The application must include the representation of the trademark and specify the goods and/or services against which it is to be registered.
- Application must be advertised and the Registrar must examine and report on the application. The Registrar then accepts the application unless satisfied the application is
not in accordance with the Act or there are grounds to reject. The application cannot be rejected until the applicant has had a chance to respond to the proposed rejection.
- The Act provides that an application must be rejected where:
- it contains a sign which is prohibited for registration under the Act
- if it cannot be represented graphically;
- it cannot distinguish the applicant’s goods and/or services from other persons’ goods and/or services;
- it would deceive or cause confusion
- it is substantially identical a registered trademark (or current application for a trademark) which has an earlier priority date for similar goods or services, except where there has been an honest concurrent use (subject to potential limitations such a where used in a particular location) or the applicant used it before the registered trademark.
Opposition to Trademark Registration in Australia
- Registration can be opposed on any grounds on which an application for the registration of a trade mark may be rejected under this Act, except the ground that the trade mark cannot be represented graphically.
- The registration of a trademark can also be where:
- the applicant doesn’t own the trademark;
- an owner of a deceptively similar trademark first use the trademark in that category and continuously used that trademark;
- the applicant does not intend to use or assign the trademark for use in Australia;
- another trademark used, before the applicant’s priority date, acquired a reputation in Australia and the applicant using it would likely deceive and confuse;
- it contains a geographic indicator of being from a particular area but is not; and
- application was defective, contained misleading information or was made in bad faith.
- An Australian trademark provides protection only within Australia. Australian trademark owners can seek trademark protection overseas by applications filed directly to each country or by a single international application filed through the World Intellectual Property Organization (WIPO) nominating the Madrid member countries in which protection is sought. All requests for protection in Madrid member countries are examined according to the trademark laws in the designated countries.
- Australians must lodge their application through IP Australia’s Madrid e-Filing platform. Requirements to apply for an international trademark are:
- you must have an application/registration in Australia on which to base your application;
- you must meet entitlement requirements within Australia
- the mark on the international application must be identical to that contained on the Australian application/registration;
- the goods and services in your international application must be covered by the claims in the Australian application/registration; and
- the applicant on the international application must also be the applicant on the Australian application/registration
- One of the biggest benefits of filing through the Madrid Protocol is that you can use one lawyer in your local jurisdiction to file the initial application, though if there is any pushback in a particular country, you will require an attorney registered in that jurisdiction.
Enforcement and Protection of Trademarks
- Laird Lawyers act in all aspects of intellectual property protection, enforcement and recovery. The method of enforcement, unsurprisingly, depends on the nature of the intellectual property and the nature of the dispute.
- Firstly, all decisions of the Registrar can be appealed to the Federal Court (or the AAT in certain circumstances).9 This includes all aspects of the registration process, whether an application was rejected and an opposition to application is received or is rejected.
- If an application has been accepted, we can act with respect to applications to have a registered trademark removed from the register where the owner has not used the trademark for 3 years.
- Where a person infringes you trademark (except in certain circumstances where used in good faith) the Court may prevent an injunction to prevent continued use and an award of damages or account of profits. If you are threatened with litigation for use of a trademark, you may also be able to seek from the Court a declaration that the threat is unjustified.
- Finally, there are processes to prevent the importation of goods that infringe a persons trademark before it enters the Australian market.