Why you should register a trade mark
You are not legally obliged to register your business’ brand, name or logo as a trade mark. However, a registered trade mark can enhance your business by clearly identifying you as the owner of the trade mark. It also prevents others from using your brand for similar goods or services. If you don’t have a registered trade mark, and another person or business uses your trade mark, you will need to resort to an action in “passing off” (in which you would need to establish your reputation in the brand and loss or damage) or under the Australian Consumer Law. These options can be a more difficult than trade mark infringement.
Another benefit of registering a trade mark is that they are business assets. Registering a trade mark can add value to your business should you decide to sell your business or licence your business’ products or services.
How to register a trade mark
To register a trademark in Australia, you need to lodge an application with IP Australia. Upon receiving an application, there are certain factors that IP Australia will consider when deciding whether to accept your trade mark application. Obtaining registration is sometimes difficult. IP Australia will object to your application to register a trade mark if the trade mark is:
- not capable of distinguishing your business’ products and services from other businesses
- likely to deceive or cause confusion
- substantially identical or deceptively similar to a trade mark registered by another person or business
- substantially identical or deceptively similar to a trade mark that is the subject of a trade mark application by a different person or business, that was applied for prior to the date on which your application was submitted.
For these reasons, it is important to do searches to ensure that your brand doesn’t conflict with existing trade marks. This should be done before developing a new brand, or seeking to register a trade mark. If it does, this could prevent you from achieving registration. It could also put your business at risk of infringing an existing trade mark.
If you do apply to register a trade mark, and receive an objection for one of the reasons above, it is possible to overcome the objection.
Objection for Reason 1
You can do this by submitting evidence that your use of the trade mark makes it “factually distinctive”.
Objection for Reason 2, 3 and 4
You can overcome an objection by providing evidence of “prior use” or “honest concurrent use” of your trade mark. In all of these cases, evidence of use is submitted to IP Australia. This is done in the form of a statutory declaration, attaching examples of your business’ use of the trade mark.
If your business hasn’t already registered your key brands, logos or business names as trade marks, CIE Legal can assist you in the IP Australia trade mark application process (and advise you on the likelihood that your trade mark will be capable of registration). If you do receive an objection to your trade mark application from IP Australia, we can advise you on how best to respond to the objection, and where necessary, assist you compiling the relevant evidence of use of your trade mark for submission to IP Australia.