Protecting Trade Marks in Australia: A Rough and Ready Guide

Want to know more about the trade mark system in Australia? Read on for our simple guide to protecting trade marks in Australia.

What is a trade mark?

The Trade Marks Act 1995 (Cth) defines a ‘trade mark’ as:

a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

A ‘sign’ includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent. Particular signs are prohibited from registration. For example, marks including the word ‘bank’ cannot be registered without consent from the Australian Prudential Regulation Authority.

A trade mark is ‘registered’ if it is registered with IP Australia and is protected under legislation. However, an ‘unregistered’ trade mark can be protected under the common law, and the Australian Consumer Law. Most relevantly, the Australian Consumer Law prohibits misleading or deceptive conduct in trade and false or misleading representations in relation to goods and services.

What laws are there for protecting trade marks in Australia?

The main pieces of legislation governing registered Australian trade marks are:

• Trade Marks Act 1995 (Cth); and
• Trade Marks Regulations 1995 (Cth).

Trade marks are also governed by various international agreements that Australia has signed, including:

• the Paris Convention for the Protection of Industrial Property;
• Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks; and
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks.

Is the owner of a trade mark the ‘first-to-use’ or ‘first-to-file’?

Ownership of a trade mark is generally determined on a ‘first-to-use’ basis (i.e. who uses the trade mark first, rather than who files for registration first). If there is no use before filing, ownership will be determined on a ‘first-to-file’ basis.

Are foreign trade marks recognised in Australia?

Trade marks registered overseas are not automatically protected in Australia. However, a foreign application for registration can be made under the Madrid Protocol. If this application is lodged within six months of filing a foreign trade mark application, priority can be claimed from date of the foreign application.

Who can register for a trade mark?

A person (or company) can apply to register a trade mark if:

• the person claims to be the owner of the mark; and
• in respect of the goods and services relating to the mark, the person:
  1. is using the mark;
  2. intends to use the mark;

• has authorised (or intends to authorise) another person to use the mark; or
• intends to assign the mark to a body corporate to be used by that company.

What rights does a trade mark owner have?

A trade mark owner enjoys a range of exclusive rights in relation to their trade mark, including the rights to:

• use or authorise use of the trade mark in respect of the types of goods or services for which the mark is registered;
• take action against anyone who infringes the trade mark by using a sign that is substantially identical or deceptively similar to the registered trade mark in relation to goods or services of which the trade mark is registered (or which are closely related).

Why would a trade mark be refused registration?

A trade mark could be refused registration for a variety of reasons, including that it:

• contains prohibited signs;
• cannot be represented graphically;
• is not capable of distinguishing the goods or services because it is descriptive or non-distinctive;
• is ‘scandalous’ (i.e. shameful, offensive, shocking); or
• is similar to an existing registered trade mark.

One of the most frequent reasons for refusal is the generic or descriptive nature of a mark. A trade mark cannot be registered if it would allow one person to have a monopoly over words that are commonly used in connection with a particular type of goods and services. For example, it would be unfair for a sports wear manufacturer to prevent competitors from using the phrase ‘Best Sports Wear.’ In some instances, this objection may be overcome by providing IP Australia with evidence of use of the mark, proving that consumers associate the mark with their business.

How do you go about protecting trade marks?

To protect a trade mark you must register it. The first step of the registration process is filing an application with IP Australia. This can be posted in hard-copy, or submitted online. Applicants should conduct trade mark searches before submitting an application. As at December 2017, the application fees are as follows:

• $250 per class if selecting goods and services from a ‘pick list’
• $330 per class if you need to submit a custom description of goods and services
• Fees are higher for ‘series’ marks.

The next step in the process is ‘examination.’ At this stage a trade mark examiner will examine the application and decide whether the application should go ahead, or raise objections. If the examiner raises objections at this stage, the applicant will receive an ‘adverse report.’ The applicant will then have 15 months to resolve the application. This could involve changes to the mark, or changes to the proposed classes of goods and services. The applicant could also need to submit evidence to use to overcome objections based on distinctiveness, or existence of an earlier filed trade mark.

Once the trade mark is accepted by the examiner, it is advertised in the Australian Official Journal of Trade Marks. Third parties will then have two months to oppose registration of the trade mark. According to IP Australia, approximately 2% of trade mark applications are opposed.  If opposition proceedings commence, a hearing will be held by the Registrar. Once the trade mark passes the opposition stage, it will be registered. The trade mark will need to be renewed every ten years.

The trade mark registration process takes at least seven and a half months. This waiting period jumps to two years if a third party lodges an opposition.

What can a trade mark owner do if someone infringes their trade mark?

A trade mark owner (or authorised user) can bring an action for trade mark infringement. In infringement proceedings, the following civil remedies may be available:

• injunctions
• monetary compensation (i.e. damages or account of profits); or
• orders for delivery up or infringing goods.

The Trade Marks Act outlines a range of defences to trade mark infringement such as where the trade mark is used for the purposes of comparative advertising or the trade mark is the defendant’s name or the name of its place of business (and is used in good faith).

Want to know more about protecting trade marks? Looking for an experienced solicitor in Newcastle, Sydney or the Hunter to advise you on intellectual property law? Call us on (02) 4929 7002, email us or complete an enquiry form.