TRADE MARKS

A trade mark may be a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent or a combination of any of these which is used to distinguish the goods or services provided in the course of trade by a person from those provided by another person. Trade marks are personal property and may be protected, sold or assigned.

Although it is not compulsory, you may register a trade mark with IP Australia. By registering your trade mark, you obtain the rights to the exclusive use and/or control of the use of the trade mark for the goods and services for which it is registered.

You may apply for the registration of a trade mark if you are the owner of a trade mark, and:

• you use or intend to use the trade mark; or
• you have authorised or intend to authorise another person to use the trade mark; or
• you intend to assign the trade mark to a body corporate which intends to use it.

This is an important question.

As a starting point a basic list of classes can be found here.

Further ideas and information can be found at:

• IP Australia's search portal (see what other people including your competitors have done)
  • Click here and logon as a guest.
• WIPO
  • Click here for various relevant international conventions.
  • Click http://www.wipo.int/classifications/nice/en/ for the Nice Convention which is particularly relevant
  • Click here to use the WIPO search tool for relevant classes.

If you pick from these lists and using these tools then you are off to a good start. However, professional advice should always be sought for the best outcome.

A trade mark cannot be registered if:

• its use would be likely to cause confusion or deceive by being substantially identical with or deceptively similar to a trade mark which is registered in respect of the same or similar goods and services;
• its use would be contrary to law;
• it contains or comprises scandalous material; or
• it would otherwise not be entitled to protection by law.

If you register a business or company name which is the same as someone elses registered trade mark and your business or company trades in the same goods and services for which the trade mark was registered, legal action may be taken against you to prevent you from using the company or business name.

Ownership of a trade mark may be transferred but the transfer must be registered. You may transfer the trade mark for some of the goods and services for which it is registered, but you cannot transfer a trade mark for only a part of Australia. A trade mark may be owned by more than one person as long as all owners use the trade mark together.

Although it is not compulsory, owners of registered trade marks should mark them with the symbol: ®. It is an offence for owners of an unregistered trade mark to represent that they are registered. They can mark them as unregistered by using the symbol: ™ , or if an application has been made it can be marked: ™ application pending.

Persons living in, carrying on business in Australia, or having Australian nationality and who have a trade mark application or registration for a trade mark in Australia, may apply by single application for international registration and protection of their trade mark in one, some or all of the other Madrid protocol member countries.

When you purchase a trade mark you should ensure that you get:

• a warranty of title and an indemnity to back it up; and
• an undertaking that the assignor will not use a substantially identical or deceptively similar trade mark in respect of, at least, goods and services similar to those which the buyer intends to use the trade mark.

The following are important issues to consider:

• Quality control, sampling techniques and rights to terminate if quality controls fail.
• Control over packaging and advertising
• Duty to preserve the trade mark and avoid actions which may cause a challenge of the registration of the trade mark
• Duty to report possible infringements, assisting in proceedings, sharing of costs and damages awards
• Restrictions on sub-licensing and using similar corporate or business names

If a registered trade mark is not used someone may apply to have the registration cancelled.

This article is a guide only and should not be used as a substitute for proper legal advice, readers should make their own enquires and seek appropriate legal advice.