Trade mark registration guards your brand against imitation

Do you want to prevent your competitors from copying your brand?

If so, the best way to protect it is to register your trade mark.

What is a trade mark?

A: A sign to help customers recognise you and your goods and services so they know they are getting the genuine article. Trade marks are an important part of branding.

The sign could be a name and/or a logo (e.g. ‘Nike’ and the Nike swoosh). More exotic forms of signs include actions and colours (e.g. Toyota’s jump and Cadbury’s purple).

What is a trade mark registration?

A: A commercial asset which gives you the right to stop others using deceptively similar trade marks to draw away your customers.

Why register?

A: To protect your brand against counterfeiting.

It is much easier to stop counterfeiters if your trade mark is registered. Without a registration, action against counterfeiters would require proving misleading and deceptive conduct or passing off. This is often difficult and costly.

The registration process can reveal existing registrations that might be infringed by your use of your trade mark in time for corrective action to avoid a costly dispute.

In Australia, registration also provides an initial defence to infringement of others’ registrations.

Requirements for a valid registration

Generally speaking, to obtain a valid registration the trade mark should not be:

  1. something that ‘other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use’ (e.g. the trade mark should not be descriptive of the goods and/or services); or
  2. deceptively similar to any existing trade mark.

Whilst 1 and 2 can be overcome if you are already using the trade mark and can evidence that the mark is well recognised in the market, this is costly. Selecting a mark that does not contravene 1 or 2 (e.g. does not describe the goods or resemble a competitor’s mark) will reduce the cost of the application process.

How long does a registration last?

A trade mark registration can last indefinitely. Renewals are payable every 10 years and you must actively use your mark to avoid de-registration for non-use.