Trade marks protect your brand

Trade mark registrations are the best way to stop competitors copying your brand.

Registered trade marks define your rights to use the mark in a way that is easy for everyone to recognise. This makes a registration the cheapest and easiest way to deal with an infringer.

Trade mark registrations make it an open and shut case that you own the rights. When you need to enforce them, you don’t have to prove you have a reputation, or ownership under common law. Instead, you focus on the infringer’s activities from the start of the case.

This means the mere fact of registration can be enough to stop others. They can understand what you own, they know what they have been doing and the law states what they are not allowed to do.

Unregistered trade marks

To stop competitors copying your brand when the trade mark is unregistered is a lot harder. Companies have to prove they built up a big reputation in a trade mark to even get to the starting line. Without a big reputation, there may not be anything a company can do. Then they have to prove the infringer’s activities might mislead or deceive consumers. It costs a lot more than registering the trade mark back at the beginning.

It’s also a lot harder to get an infringer to settle instead of going to court in unregistered mark cases.

Getting a valid trade mark registration

There are many legal requirements for getting a valid trade mark registration. We look after those. From a practical perspective, picking the right trade mark comes down to:

  1. Will customers like it?
  2. Can you use the trade mark?
  3. Can you can register it?’

Setting aside whether customers like it, the easiest trade marks to register are ones that:

  • are not deceptively similar to earlier applications or registrations; or
  • if similar, are not for similar products or services

and that:

  • are not something others ‘desire to use’ on their products or services. Words that describe the product or service are a particular problem.

Sometimes it is possible to register more difficult marks that have been used for a while, but it takes more effort and costs more.

What are trade marks?

Trade marks are a sign that help customers recognise products. When they see it, they know they are getting the genuine article. Trade marks are an important part of branding.

Signs can be a brand name, a logo or a combination of both (e.g. ‘Nike’ with or without the Nike swoosh). More exotic signs include actions and colours (e.g. Toyota’s jump and Cadbury’s purple).

What is a trade mark registration?

A commercial asset and a legal right. Registrations record your ownership of trade marks. They give you the right to stop people using similar marks that might mislead your customers.

Why register?

To protect your brand against counterfeiting. Registrations make it much easier to stop counterfeiters. You do not have to prove you have a reputation to stop others. In Australia, registration also provides an initial defence to infringement of others’ registrations.

What about other companies registrations?

The most important legal question is ‘Can you use a new trade mark?’, not ‘Can you can register it?’.

Finding out what is already registered is a vital step to avoid a costly dispute and rebranding. That’s why clearance searching is important. Searching can also look at other risks, like who has registered a relevant domain name.

How long does a registration last?

A trade mark registration can last for ever. Renewal fees are payable every 10 years.

What if I stop using the trade mark?

The registration will cease when you don’t pay a renewal fee.

Sometimes a registration causes a problem for someone else. They might apply to have it removed, and you must defend it and prove you used it within the last three years.