A trademark is a word, symbol or design (or a combination of these) used to distinguish the goods or services of a person or organisation from those of others in the marketplace. Your trademark, often called your brand, is your identity. It is how you show your customers who you are.
A common misconception is that a trademark is the same thing as a business name, company name, domain name or even a design. This is not the case. A trademark is not limited to a logo either. It can be a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or combination of these.
Historically, blacksmiths who made swords in the Roman Empire are considered to be the first users of trademarks. A prominent trademark that has been used for a long time is Löwenbräu, which claims to have used its lion mark since 1383. The first trademark legislation was passed by the Parliament of England under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold.
Some modern examples of trademarks include: The phrase/word ‘The Airpocket’; the kangaroo in a red triangle on the tail of Qantas aeroplanes. Companies can register other distinctive features that set their goods apart from other brands. For example: the distinctive pocket stitching on Bettina Liano and Levis denim garments; the check pattern belonging to Burberry; the red stripe on the heel part of a Prada shoe sole. All of these have been registered as trademarks.
There are two symbols associated with trademarks – ™ (the trademark symbol) and ® (the registered trademark symbol). Each one represents the trademarks’ level of protection. ™ can be used for any common law usage of a mark, whereas ® can only be used by the owner of a mark after it has been registered with the relevant national authority, such as the Patent and Trademark Office. The correct way to display either symbol is immediately following the mark in superscript style.
Registering a trademark
Cautious people usually conduct a trademark search before they introduce a new product or service. If it is registered, your trademark will be visible to any potential users, thereby stopping any possible infringement right from the get go.
A registered trademark can provide protection against a “non-competitor” using, whereas use of an unregistered trademark can usually only be contested if the other business is in the same industry as yours. It is much easier to show that a law has been breached, than it is to prove “Passing Off” of your trademark.
Note: The law of passing off prevents one trader from misrepresenting goods or services as being the goods and services of another, and also prevents a trader from holding out his or her goods or services as having some association or connection with another when this is not true.
Registering your trademark will also grant you exclusive rights to use of your mark country-wide (even if it is not actually used throughout the whole country). Leaving your mark unregistered, on the other hand, will be protected under civil law, but only within a confined geographic area where you have established reputation and goodwill.
How to register a trademark
Registering a trademark within Australia can take up to seven months to complete and usually involves the following stages:
- preliminary search of existing trademarks
- submitting an application
- examination of your application by the Trademarks Office
- publishing of the application in the Trademarks Journal
- time for opposition to the application
- allowance and registration (if there is no opposition)
In Australia, trademark registration lasts for ten years from its filing date. You can renew your trademark registration, during the 12 months before it expires, or up to six months after.
Registering a trademark in one country does not protect your rights in other countries. If your products are sold in other countries, you should consider applying for international registration. This will also safeguard you from someone overseas using your trademark, or registering it, and damaging your brand and reputation. It is best to contact a trademark agent or the embassy of the country in question to find out about procedures.
Enforcing trademark rights
As a trademark owner you have the right to dispute any unauthorised use of trademarks which are the same as or similar to your trademark. There are a number of factors that come into play though, such as: Is the trademark registered? How similar are the trademarks involved? Are there similarities with products or services offered? How well-known or “famous” is your trademark?
You must actively use your trademark for trading, otherwise you may lose it to someone else.
All trademark rights will cease if a mark is not actively used for a period of time, normally 3-5 years in most jurisdictions. If your trademark is registered, failure to actively use your mark, could put your trademark at risk of being removed from the register on the grounds of “non-use”.
Trademarks can be licensed to others for commercial purposes. The trademark owner (the licensor) grants a permit to a third party (the licensee) to legally use their mark. A contract is drawn up between the two parties, outlining the policy and detailing the goods and services that are agreed to be licensed. Examples of licensed trademarks are: Bullyland, who obtained a license to produce Smurf figurines; and the Lego Group, who purchased a license from Lucasfilm so they could launch Lego Star Wars.
The licensor must monitor the quality of the goods being produced by the licensee to avoid the risk of the trademark being deemed abandoned by the courts. A trademark license should therefore include appropriate provisions dealing with quality control, whereby the licensee provides warranties as to quality and the licensor has rights to inspection and monitoring.
Other forms of Intellectual Property (IP)
Trademarks are only one form of intellectual property that can be protected through federal legislation. Other forms are: patents (for new technologies); copyrights (for literary, artistic, dramatic or musical works or computer software); industrial designs (for the shape, pattern, or ornamentation applied to an industrially produced object); and integrated circuit topographies (for the three dimensional configuration of the electronic circuits embodied in integrated circuit products or layout designs).
Note: A trademark and Intellectual Property (IP) rights for a design, are not the same thing.