A QUICK INTRODUCTION TO TRADE MARKS
The Arts Law Centre of Australia recently secured the registration of its trade marks, namely 'ARTS LAW CENTRE OF AUSTRALIA', 'ART + LAW' and 'ART + LAW' together with its logo. This article highlights the importance of securing protection of brands for any business and outlines the process of registering a trade mark, which is not necessarily a straight forward process.
Trade Mark Protection
A trade mark is a sign or symbol used to distinguish one trader's goods or services from those of another. Trade marks may consist of words, letters, numerals, logos, shapes, colours, scents, sounds or combinations of these elements. While traditionally acting as a badge of origin and indicator of quality, trade marks also signify a desirable product image to consumers and act as a powerful marketing tool for proprietors. Trade marks are therefore a valuable commercial asset for any business. The effective defence and enforcement of trade mark rights is vital to protecting the goodwill and reputation of a business.
Trade marks can be formally registered in Australia under the Trade Marks Act 1995 (Cth)(the Act) through IP Australiaor left unregistered and based upon an established business reputation or goodwill at common law.
If you don't register a trade mark, broad protection for the mark may be provided by the common law of passing off, and an action for conduct likely to mislead or deceive under the new Competition and Consumer Act 2010 (Cth) (formerly the Trade Practices Act 1975), provided relevant evidence is available. You would have to show that there is an established business reputation or goodwill attached to your mark.
If you do register a trade mark, the Act confers strong and legally enforceable rights upon trade mark proprietors against other traders who may seek to use or register the same or a similar trade mark in respect of the same or similar goods or services. Trade mark registration provides a simple, reliable and more cost-effective mechanism for Australia-wide enforceable rights without having to rely upon proof of substantial reputation in the marketplace. Equivalent registration is available in most countries if you seek global protection for a trade mark.
The most robust protection is, of course, provided by all three regimes: passing off, misleading or deceptive conduct, and trade mark infringement.
Trade mark selection
When selecting a trade mark, it is important to choose a mark that is both distinctive and unique to your business. The strongest marks are often those that include or comprise a distinguishing logo or device. It is important that your trade mark is not directly descriptive of the goods and/or services to which it will be applied, as this is a ground for rejection in the trade mark registration process – a web designer cannot trade mark the word 'design' for example. Similarly, a trade mark that includes a word or element that is common on the Trade Marks Register in respect of similar goods or services will be less distinctive and, therefore, more difficult to protect.
If a trade mark that lacks distinctiveness has been adopted and used, however, it is still possible to secure registration. For example, Arts Law itself encountered distinctiveness objections for its 'ARTS LAW CENTRE OF AUSTRALIA' and 'ART + LAW' trade mark applications, but the objection was overcome by providing IP Australia with a significant amount of evidence of use in the market place. This demonstrated that, as a result of extensive use over a long period of time, consumers identify the trade marks with the Arts Law Centre of Australia. The sort of evidence required included examples of publicity and promotional material over the years since the trade mark was adopted such as pamphlets, brochures, handbooks, seminar schedules and newsletters, copies of annual reports, screen captures from Arts Law's website over the years, as well as advertising and sales figures.
The trade mark should also not be substantially identical or deceptively similar to any existing trade marks, whether registered or unregistered, and used for the same or similar goods or services. The adoption of a trade mark that is similar to another trader's mark is likely to be cited as an objection during examination if registered and/or may also attract infringement proceedings from the proprietor of the similar mark. Again, however, if a trade mark applicant is able to demonstrate, by the provision of evidence of either prior or honest concurrent use of the trade mark, it may be possible to overcome such an objection.
Prior to adoption
Prior to using and applying to register a proposed trade mark, it is prudent to conduct a full search of the mark's availability and registrability through the Australia Trade Marks Register as well as a check of all relevant common law indices. Common law indices include the Australian Electoral Commission database of common surnames, generic pharmaceutical names indexes, telephone directories, business names, domain names and the Internet. These searches are the most important pre-use and pre-filing step for any business owner with a proposed trade mark.
A comprehensive search will indicate whether there are any other deceptively similar or substantially identical trade marks that may prevent the use or registration of the mark for the goods or services of interest.
The investment in a full availability and registrability search can save a business proprietor substantial time and money. For example, potentially thousands of dollars can be wasted in preparing packaging, branding merchandise and advertising campaigns only to find another trader not only already has rights to the proposed trade mark but may also take action against your company for trade mark infringement. The cost of re-branding a product will add to the expense if a new trade mark must be adopted. Further time and expense may be incurred if an application to register a trade mark is filed without first checking the Register for any possible obstacles to registration. Further costs will be incurred in having to overcome an objection from the Trade Marks Office or another party, or having to file an application for a new trade mark.
Trade mark filing and application procedure
An application to register a trade mark is filed with the Australian Trade Marks Office at IP Australia. In order to proceed with filing a new trade mark application, the following details are required:
the applicant's full name and address details;
details of the trade mark or a clear representation of the device or logo; and
the specification of goods and/or services.
Trade mark applications are examined approximately three to four months after lodgement. If an objection is raised by an examiner (e.g., a descriptiveness objection or the citation of a prior trade mark entry), a period of 15 months is granted to allow the application to be placed in order for acceptance. If all objections can be overcome, the application will proceed to acceptance and is advertised in the Official Journal of Trade Marks for opposition purposes. The opposition period is for three months for third parties to file a notice of opposition to the registration of the mark. If no opposition is filed, the application will proceed to registration upon payment of a fee which will secure registration for ten years.
Trade mark use
It is important that the trade mark symbols 'TM' and ® are utilised correctly by trade mark proprietors.
The 'TM' symbol can be used alongside a trade mark irrespective of whether it is registered or unregistered. The 'TM' symbol indicates to others that the trade mark is used as a trade mark by the proprietor or authorised users in respect of the goods or services to which it is applied.
The ® symbol indicates that the trade mark is a registered trade mark and should only be placed alongside a trade mark that is formally registered in the country in which the trade mark is in use. It is an offence to falsely represent that a trade mark is registered.
It should be noted that five years after a trade mark application has been filed, a trade mark that has been continuously registered for at least three years but has not been used during this period in respect of all or some of the goods and services for which it is registered, will become vulnerable to a removal or partial removal for non-use upon the application by another party.
A trade mark is registered for a period of 10 years, which is renewable for additional 10-year periods upon payment of the requisite fees. IP Australia (or your trade mark attorney if you have engaged one) will forward your renewal reminder notice to you prior to the renewal deadline. It is therefore very important to ensure that your contact details are up-to-date.
Please note that there are several trade mark registration and renewal scams out there. Such scams may send a letter asking you to send money to register your mark overseas when you have not applied to do so, or to send money to someone who will renew your registration on your behalf. If you receive any such letter, seek advice from your trade mark attorney/lawyer or IP Australia to confirm whether the notice is bona fide before payment of any registration or renewal fees. The Australian Securities Investment Commission (ASIC) website also provides information about these fraudulent letters.
Lara Gunn is a lawyer at Allens Arthur Robinson