INTRODUCTION TO TRADE MARKS
By Kate Stary and Denea Bascombe, 5 June 2018
Every day of our lives we are impacted in some way by trade marks, often without us even knowing it. Many personal and business decisions are made due to a familiarity with and trust in certain brands. We know we are not alone when we decide to buy a Celine brand bag, or a Ralph Lauren Polo shirt over the generic option next to it, for no tangible reason relating to the product itself (despite what we might argue to our partners about the quality of it and the bargain it was on sale for). But what exactly is it that causes a generally logical person to pay up to 1,000 times more for a particular item? Well, it’s usually the intangible value of the intellectual property in the brand itself. Most importantly, in the trade mark that has been sculpted to tug on your wallet strings.
What is a trade mark?
At its most basic level, a trade mark is a way of distinguishing the goods or services of your business from those of other businesses. This is often referred to as your business’s ‘brand’ or indicia of source. Any feature or combination of features that distinguishes your goods or services from those of other businesses can be applied for as a trade mark, these can include:
- a word (e.g. NIKE);
- phrase (e.g. JUST DO IT);
- a letter (e.g. A);
- number (e.g. 3M);
- sound (e.g. ‘Ah McCain you’ve done it again’ jingle);
- scent (e.g. eucalyptus radiata scented golf tees);
- shape (e.g. interlocking triangles in a rack – Toblerone);
- logo (e.g. the Nike tick);
- movement (e.g. Toyota star jump movement);
- colour (e.g. Tiffany & Co blue);
- certifications (e.g. the Australian Made logo); or
- aspect of packaging (e.g. Taittinger foil).
Registering your trade mark gives you exclusive rights to commercially use, licence or sell the trade mark. This means that no one else in Australia and any other countries you apply for can commercially use your trade mark in relation to the goods and services your trade mark is registered in relation to. Due to this grant of exclusivity, trade marks must be unique, different to other trade marks used in Australia and not marks that other traders would want to use in relation to their goods or services without improper motive (think geographical indications, common surnames or descriptive terms).
Trade mark registration lasts for 10 years and it is one of the few types of intellectual property that can be renewed indefinitely. Indeed, some trade marks have been in use for centuries such as PEPS logo trade mark which has been registered in relation to ‘chemical substances for use in medicine pharmacy’ since 1906. Today, the need for a ‘mark that shows the trade of the maker’ has never been more relevant worldwide with local and global competition available at the nearest keyboard. Effective brand development starts with recognition of your products or services by your brand differentiating you from countless others, then protecting the uniqueness in your brand.
Trade mark protection
So, what do you do if you have a product or service you want to get to market? Assuming your company is new, re-branding or creating a new product/service, this process that can seem daunting at first, but can be broken down into fairly clear and achievable steps.
The first step is the exciting, adrenalin-producing job of creating your perfect branding. This is the stage where often many branding options are brainstormed and their positives and negatives are thrashed out at length before a ray of sunshine breaks through the cloudy skies and your perfect branding option is chosen.
The second step, while just as important, is often not thought of until after finalisation of the process, if thought of at all. This step is conducting a trade mark search of your preferred branding option to ensure that no one else has rights in the brand you have chosen. Why invest in developing something that cannot be legally recognised as yours? Or worse, invest in a brand that you may need to pay damages to a third party for using. You wouldn’t build a house on a piece of land without owning it or leasing it. The same analogy applies for brand development. Before you invest in marketing, brand development, signage or products emblazoned with your new brand, you should instruct a lawyer to conduct a trade mark search to determine whether your trade mark is not already in use and is capable of trade mark registration. If trade mark searches are conducted as soon as you have finished the brand selection process, you will avoid wasting funds investing in a brand that you might not be able to use commercially. In addition, you will likely have a few other branding options that were left on the cutting room floor during your brand development process that are perfectly suitable alternative options to use instead.
Assuming your trade mark search results come back clear, the third step for protecting your trade mark is applying to register it with the Australian Trade Marks Office, as well as all other countries that you trade in. We will delve more deeply into this step in a subsequent article.
Trade mark maintenance
Trade mark registration aside, brand development more holistically is a continuous exercise in creation, growth and protection. It is useful to take a step back at regular intervals and consider whether all of the trade marks relevant to your business are protected. These can include new product names, core colours significant to your business, new advertising slogans and so forth. Branding evolves over time so your protection strategy needs to also keep up. Instructing your trade mark lawyer to do a periodic trade mark audit can also bring to light any gaps in your brand protection strategy.
As with any right, intellectual property rights also come with responsibility. Although you will have various usage, protection, and enforcement rights, you will also have responsibilities to maintain your trade mark. To maintain your trade mark effectively, ensure that your business:
- uses it’s trade marks with regard to the specific goods and services the trade mark is registered in relation to within three years of applying for the trade mark (this will help prevent an action to cancel your registration on the basis of non-use);
- does not use your trade mark as a verb or a descriptive term as this could make your trade mark generic which means you could lose your exclusivity over use of the trade mark (think Googling, Jet Skiing etc);
- enters into a licence agreement if any other parties are permitted to use your trade mark (for example, with subsidiaries, franchisees and related businesses);
- is aware of other trade mark applications filed after yours that might be deemed as similar to your trade mark, so you can oppose the trade mark registrations at the appropriate time.
While it might seem daunting, your trade mark lawyers can assist you with the trade mark searching, application, licensing and maintenance processes outlined above.