• Quest Legal

Trade Marks & Brand Protection

A Practical Q&A on Trade Marks

1 November 2021


The trade mark process is simple in concept but proven to be complex in practice. Here at Quest, we want to clear some of the air around trade marks and respond to some of the questions we frequently get asked by our clients.


Q: What is a trade mark?


A trade mark is simply a “mark” unique to your business that is used to identify your goods or services from those of other traders in your sector. It can be a logo, letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these. The most common trade marks are names and logos.


Q: I have a registered business name – Is this a trade mark?


Unfortunately, simply registering company or business name does not provide you any exclusivity over that name. Company and business names are primarily a means for your clients and government bodies to identify your business. Company names and business names can be used as evidence in successfully registering a corresponding trade mark.


Q: What makes a trade mark unique?


Broadly speaking, the more unique your trade mark is, the easier it is to register. For example, the word “Google” had no inherent meaning before Google came along.


However, we see many trade marks that contain items which are broad and descriptive - trade marks that describe the services provided. For example, if you provide bookkeeping services in Sydney, it would be difficult to register a trade mark for “Sydney Bookkeepers”.


It should be noted that whilst it would be difficult to register descriptive trade marks, it is not impossible. However, you might need to find additional means to differentiate your brand such as in a logo, or provide evidence of how long and extensively you have been using the trade mark. Generally speaking, it would be best to have 5 years of trading history behind a very descriptive mark before you seek to register it. However, you can seek to rely on a shorter period of trading if your use of the trade mark has been extensive.


Q: When can I use TM and ®?


The TM symbol is used when you want to let the public and other traders know that you are claiming something as an unregistered trade mark. Best practise would be to start using TM when you have a pending trade mark application. However, this is not a hard and fast rule, and you can start using TM sooner if you wish.


The ® symbol on the other hand, has a distinct meaning under the Trade Marks Act. You should only use the ® symbol when the trade mark is registered and protected by the relevant IP office. Furthermore, it should be noted that if you export goods or trade internationally, you might be prohibited from using the ® symbol in those countries. In this circumstance you would need to check the regulations of those countries regarding ® and possibly seek to register your trade mark in those countries.


Q: Okay great, I would now like to register a trade mark around the world.


Trade marks need to be individually registered in each designation country. Fortunately, a number of countries have co-ordinated their IP systems to allow for easier international brand protection. These countries operate under the banner of the World Intellectual Property Office (“WIPO”), though to lodge through WIPO, you must first lodge the trade mark in your “home” country.


Although you can apply through multiple countries through WIPO, each country is treated as a separate application. As such, your trade mark will be subject to those countries’ IP rules and regulations.


It’s also important to note that not every country or territory in the world is a member of WIPO. If you wish to protect your brand in a country that is not a WIPO member, it is often necessary to engage with that country’s regulatory body directly, or appoint an agent in that country.


What to do next?


With all the above in mind, let’s briefly go over the Australian trade mark application process:


• Step 1 – Research


Prior to lodging your application, you should search through the trade mark registers to see if anyone has had the same great idea as you and has protected it already.


• Step 2 – Prepare Your Application


Trade marks are lodged in specific “classes” depending on the types of goods and services you provide. You will need to determine the best classes for your protections.


You will also need to determine which person or entity will own the trade mark. Ideally, this would be a separate to your “trading” entity such as in a trust or holding company. This helps to insulate your trade mark in the event your trading entity is subject to any third-party claims.


• Step 3 – Lodge Your Application


On lodgement, you will have to pay the relevant application fees. Your trade mark will then be examined by a trade mark examiner. If there are any issues with the application, the examiner will produce an Adverse Report highlighting the issues and the means to overcome the problems.


If there are no issues, the trade mark will be accepted for registration. The earliest a trade mark can be registered is 7.5 months from application.


• Step 4 – Advertisement & Registration


Towards the end of the lifespan of your trade application, your trade mark will be advertised for 2 months. This gives third-parties the opportunity to oppose your trade mark (if they have valid grounds to do so).


If no oppositions are raised in this period, the trade mark will be registered.


Here at Quest Legal, we are happy to guide you through the trade mark process and advise you as to the best way to protect your IP. If you have any questions or want to discuss the above further, please do not hesitate to reach out to any of the Quest Legal team at info@questlegal.com.au.


Trade Marks Explained Simply by An Intellectual Property Lawyer

29 October 2021


Every successful Australian business, whether large or small, has a unique story to tell the world about its products and services.


Your business’ brand can be your biggest asset. It’s how your customers know you. It is used to identify the source of the goods and services you provide and represents the goodwill and value your business has built. A trade mark provides protection for your brand, through your name, slogan, logo, and many other intellectual properties your business may have.


The owners of popular brands have reaped huge profits from their trade mark rights as well as ensuring that people know who produces the goods or services that they purchase.


But, it's not just the multinationals with big pockets who can protect their brands...


Australian small, medium and even micro-businesses starting out can lock in brand protection for a small investment.


A trade mark is more than just a logo. It can be a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these.


If you have created something unique, that gives you, or can potentially give you, a competitive advantage and you do not want it to be copied by a competitor who wants to profit from your ideas, then trade marking your creation is the smartest move. Trade marking your brand also prevents you from having to undergo costly rebranding if someone else has copied your brand.


If you are starting a business, it is wise to register your trade mark early. When it comes to trade mark, it’s first come first served.


Make Sure You Are Not Infringing Someone Else's Trade Mark


When starting your business, you may not have been made aware of the complexities around trade marks.


Making sure you are not infringing someone else's trade mark is critical to avoiding large legal costs at worst, or wasting enormous funds on designs and branding that has to be thrown away at best.


A competent legal service can provide you with the confidence that your ideas are able to be trade marked and do not infringe on an already existing trade mark.


What is a Trade Mark?


Despite common trade mark misconceptions, business names, company names or domain names, are not trade marks and do not provide you any exclusivity or trade mark protection.


A trade mark is something that specifically represents your business.


It's not until you have something that can be uniquely associated with your business - the shape or design of a bottle for instance - that you move into the realm of trade mark protection.


However, a trade mark should not be confused with a design.


A design refers specifically to the visual features of a product such as shape, configuration, pattern, or ornamentation and must be new or unique to be registered, whereas a trade mark has no such requirement.


The Intellectual Property (IP) rights of a design are also somewhat different to those of a trade mark.


Examples of trade marks include:

• The word/phrase ‘The Airpocket’

• The flying red kangaroo on the tail of Qantas planes.


Examples of designs include:

• The new shape of the seat on an ergonomic chair

• The new visual features of a Breville juicer


Case Study: Australian Business SourceBottle


SourceBottle is an Australian business that ran into problems by assuming that registering a domain name would be sufficient to protect their interests.


When the business was founded the owner thought that purchasing the domain name “sourcebottle.com.au” would secure the rights to her company name. When she decided to expand globally however she discovered that a martial arts studio already owned the 'sourcebottle.com' domain and that without a registered trade mark she had no way to prevent others from using the name.


To secure her business she needed to register ‘SourceBottle’ as a trade mark. She engaged a trade mark attorney to manage the process, and they were able to determine the right classes under which to register the mark.


With a registered trade mark, she was able to secure her business name internationally and was even able to purchase the .com domain from the martial arts studio.


- Source: IP Australia.


Case Study: High Profile Trade Mark Case Adidas vs. Forever 21


In August 2015, in a move that garnered a fair amount of media interest, shoe and clothing manufacturer Adidas sued retailer Forever 21 for the development and distribution of several products that they claimed infringed on Adidas’ long-time ‘three stripes’ trade mark. Adidas maintained that the ‘three stripes’ were the prime component of their logo and products, and claimed investments of several million dollars towards the development and the protection of their brand.


Following the charge of trade mark infringement, there were no public statements from either of the parties. In December of 2017 news emerged that Adidas and Forever 21 had agreed to an out-of-court settlement.


While the details of the settlement have not been made public, this case demonstrates the importance of trade mark registration for protecting the assets of a business and the benefits of handling disputes through an alternative dispute resolution where the specific details pertaining to the matter can remain private.


Case Study: High Profile Trade Mark Case D2 Holdings vs House of Cards


In 2016 Massachusetts-based D2 Holdings filed a lawsuit against MRC II Distribution, the company responsible for the popular Netflix thriller “House of Cards”.


D2 Holdings registered the trade mark “House of Cards” for “entertainment goods and services” in 2009 for use by a radio show and while MRC applied for a trade mark on the term numerous times they were prevented from obtaining it due to the previous registration.


D2’s lawsuit claimed that despite MRC being unable to secure the trade mark they licenced the term “House of Cards” to other entities for the production of fan merchandise and gaming machines, thus infringing on D2’s rights.


They argued that it was likely that MRC were aware of D2’s rights to the term due to their repeated failures to obtain registration for the term themselves, and demanded the destruction of any physical or digital materials bearing the mark “House of Cards”.


While the lawsuit is still pending it seems likely that MRC II Distribution will need to pay D2 Holdings substantial damages for the infringement and to licence the trade mark for future use.


There are numerous other examples of high-profile trade mark cases which should serve as a reminder of the importance of securing and defending trade marks for your business.


Brand Protection for Australian Business Enterprises


Brand protection is the process of protecting the intellectual property (IP) of your company - including patents, design rights, colour marks and trade dress - against counterfeiters, copyright pirates, and other infringers. This works with trade mark protection to protect your whole business.


Brand protection is an important part of any business plan. It protects you in two ways:


Builds your reputation - When customers see that you are actively protecting your brand, it is likely to enhance their perception of your company.


Helps avoid loss or damages - If someone infringes on your IP rights you risk loss of revenue, damage to your reputation, and substantial legal costs.


Brand Abuse


Brand abuse is an umbrella term that refers to an outside party infringing on a brand's intellectual property in order to take advantage of its well-respected reputation.


Brand abuse can come in many forms including, but not limited to:

• Counterfeiting

• Rogue websites

• Copyright piracy

• Trade mark squatting

• Patent theft

• Social media impersonation


These often fall into one of four categories.


Copyright Infringement - Copyright infringement refers to the unauthorised copying, distribution, display or performance of any of your works protected by copyright. Copyright is a core type of intellectual property covering original works such as literature, video, photographs, audio, or other art forms.


Trade Mark Infringement - Trade mark infringement is the unauthorised use of your trade mark on goods and services. Trade marks are a badge or origin and anything that can be used to differentiate your product or services from others often falls within this.


Patent Theft or Patent Infringement - Patent theft or infringement is the unauthorised use of your patented inventions, including all processes and functions associated with them.


Design Infringement - Design infringement generally involves the manufacture of goods using patented design features to create a similar unauthorised version of your product.


When you enter the world of Brand Protection, you’re also likely to hear the term ‘intellectual property infringement’. This is the umbrella term that covers all types of infringement, including copyright and trade mark infringement. Intellectual property infringement also covers infringement of your design patents or theft of your trade secrets.


If you would like to know more information about intellectual property infringement, we have several videos outlining some very interesting cases that you can find below.


Conclusion


So, there you have it. Now you know what a trade mark is and how it differs from a business name or domain name.


We hope this document has given you some advice on how to go about protecting your brand.


If you want to know what to do to protect your brand, please contact Quest Legal on 1300 279 500 today for a free, no obligation consultation. We have specialist trade mark lawyers available in our offices in Sydney and Perth and we register, defend and advocate on behalf of our clients Australia-wide.


Quest Legal offers Fixed Price legal services, so you can be clear as to what your brand protection and trade marking investment will be from the start.


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