Types of trade mark include words (MAMBO), initials (IXL or AMP), graphics (ABC TV symbol), colour combinations (BP’s green and yellow colours) and shapes (Coca-Cola bottle shape).

It is crucial to have a trade mark search and opinion conducted before commencing use of the trade mark, to reduce the chance of legal action which can lead to product recall, re-branding and payment of damages.

Unregistered Trade Marks    ™

Registration of a trade mark is not compulsory. However, protection of rights in unregistered marks, by trade practices and passing off actions, requires proof of an established reputation in the mark.

Registered Trade Marks    ®

The owner of a trade mark used or proposed to be used in Australia can apply for registration of the mark for the goods/services for which the trade mark is used or proposed to be used. Goods and services are divided into 42 separate classes, and extra fees are payable for each class to be covered by the application.

The owner entitled to register a mark is the party who is responsible for the quality of the goods/services. This will often, but not always, be the manufacturer.

Licensing of registered trade marks is permissible providing the trade mark owner maintains broad quality control, e.g. specifications as to minimum standards.

Trade mark applications are examined by the Trade Marks Office of IP Australia and, if accepted, are subject to a 3-month period for opposition by third parties. A trade mark will not be registered if:

• it is likely to be needed by other traders in the ordinary course of trade, e.g. descriptive words or symbols, surnames, place names

• the trade mark is substantially identical to one already used in Australia by another owner, for the same goods/services

• the trade mark is confusingly similar to an earlier registered mark or pending application by a different owner, for goods or services closely related to those of the application

• use of the trade mark is likely to cause confusion, in view of established use of a similar mark by another owner

The same or similar trade marks can co-exist for different goods or services by different traders providing the respective goods/services are sufficiently different so that no confusion will arise. (For example, SWAN for beer or for pencils). However, famous marks may have rights extending beyond similar goods/services.

Proof of an established reputation in the trade mark can help achieve registration of a descriptive mark, or proof of longstanding market place co-existence, can help overcome rejection on the basis of an earlier registration.

Registration of a trade mark gives the owner the right to restrain the infringing use of deceptively similar trade marks by others for the goods/services registered and, with some exceptions, for similar goods/services, and to gain compensation.

After is has been registered for five years, a trade mark not used in Australia in the previous three years can be removed from the Register.

Registering a business name is not the same as registered a trade mark.  It gives you no right of action against others.