Like all business owners and leaders, I am sure you have sought advice or wondered how to protect your brand and intellectual property. For this month’s article I have gathered a number of freqeuently asked questions that I have received from colleagues and clients with a view to demistifying trade marks and providing you with the latest information from a respected Patent Attorney. I trust that this ‘down to earth’ interview will be helpful for your situation.
Please note that this article is not advice and if you require legal services relating to IP protection, I thoroughly recommend that you speak with Paul Thompson from Fisher Adams Kelly (click here for Paul Thompson’s bio and contact details).
Megan: What is a Trade Mark?
Paul: A trade mark is a sign used in commerce to identify the source of goods and / or services. The most common trade marks are words (eg., Holden), designs (Commonwealth Bank sign) and combined words and designs or logos (McDonalds with Golden Arches). Trade marks are not limited to this range and can extend to sounds, colour and scents although these are less common.
Megan: Who needs to use Trade Marks?
Paul: Trade marks are perhaps the most serviceable and accessible form of intellectual property available to a business enterprise. A registration of an Australian trade mark provides monopoly rights across the whole of the country. It is also personal property.
The trade mark acts as a formal repository of the goodwill of a business. Not only does it provide a means of limiting the activities of competitors in a way that may mislead the marketplace, it also provides an asset in the sale of a business. As intangible property rights now form the majority of the assets of most successful businesses, the importance of trade marks should not be underrated. If a person is in business, they should consider the relevance and potential benefits of trade mark registration.
Megan: What about if you are a small business, is it still necessary?
Paul: A registered trade mark is never necessary but can be essential. Even small businesses can benefit from registration of a registered trade mark for the reasons outlined above.
Megan: Do I just get a logo designed and then get it trade marked?
Paul: The advantages of owning a trade mark also lead to potential problems in using or registering a trade mark. That is, another trader may have the same or a similar trade mark registered for similar goods or services. Therefore, use of a trade mark may actually infringe the rights of the other trader who has already obtained registration of their mark. Therefore, it is always very wise to conduct a trade mark search to establish whether the trade mark is available for registration and use. There have been many instances of commitment of considerable funds and resources into a trade mark only to find it cannot be used because another trader with an earlier priority position objects.
Megan: How do I know if my new logo is like somebody else’s?
Paul: As noted above, it is wise to conduct a search to assess availability for registration and use. Most commonly, this search should be conducted by professionals although it is possible to access the Australian Trade Marks Office website to conduct some preliminary searching yourself (simply search “ATMOSS”). If the exact mark is there and is for the same goods, there is clearly a potential problem. It may be worthwhile obtaining professional advice at that stage as there is sometimes the possibility the trade mark may still be available, but this is only in unusual circumstances.
Megan: What about website URLs? Can I choose a web address that sounds like somebody else’s brand?
Paul: Websites and the Internet are posing a wide range of questions for the trade mark system. It is possible to have a website that is similar to someone else’s trade mark but, if you use that website to sell the same goods or offer the same services for which the other trade mark is registered, there is a real risk you will infringe the legal rights of that other trade mark owner. One of the issues with a website is that there is only one of that particular website. Trade marks on the other hand can be the same but provided they are for entirely different goods or services, there is usually no risk of confusion and different traders can proceed with the same trade mark. Obtaining a website using the brand of a competitor is likely to encounter problems.
Megan: Do trade marks apply in the web space?
Paul: The answer is yes. This highlights another problem of the Internet in relation to intellectual property and indeed law generally. The Australian Trade Mark law applies only to Australia. The Internet has no geographical boundaries. Therefore traders in different jurisdictions can run into each other in the electronic space. This is an area of law that is still being worked out. You will sometimes see notices that a particular product is not offered for sale in a particular country. This is often because another trader has trade mark protection in that country that is relevant to both the mark and the goods.
Megan: Can infringements online actually be stopped?
Paul: The answer is yes. The first step is usually to write a letter of demand or request that the infringing party stop their activities. If the issue can be amicably resolved, that may well be the end of the matter. In the event the other trade refuses to comply, it may be necessary to resort to the courts for an order to that effect. The major problem arises if that other trader is outside Australia. While the infringing trader can be stopped in their activities in Australia, the ability to close them down offshore is somewhat limited. It is however, quite possible depending on the actual situation and the determination of the person whose rights are being abused. This is clearly a specialist legal area and requires expert input, preferably at an early stage.
Megan: What do I do if someone is using my business name?
Paul: It is very important to note that both a business name and a company name are not trade marks. A business name is registered because the law says it must be to protect people who use its services. A company name is simply a name. Although both the business and company name may be associated with reputation rights arising from a history of trading, they do not provide a registered monopoly. In the event a first person has a registered trade mark and a second person registers the same word/s as a business or company name and commences trading in goods or services that are the same, the first party will almost certainly be successful in stopping the owner of the business name or company name. So, if someone is using your trade mark for goods or services that are the same or similar, seek legal advice. If someone is using the same business name as your business, you may have enforceable rights but they are nowhere near as clear as when you have a registered trade mark. Again, seek legal advice.
In summary, it is worthwhile choosing a trade mark that has market appeal and which has been cleared for use and registration. An application for registration should be filed. Part of the clearance search should ensure you can obtain a relevant website or websites. The business name availability should also be cleared. Once these steps have been taken, you can implement a commercial strategy that will make that trade mark a success in the marketplace and turn if from a registered trade mark into a brand with associated goodwill, market profile and value.
Please feel free to contact me for more information on 07 3899 8335.
Kind regards
Megan Walker