As your company grows, trademarks become increasingly relevant. Over its lifetime, your company will spend an enormous amount of time and resources developing its goodwill and you need to ensure that your brand name is adequately protected. On the flip side of the coin, you must safeguard your company from any litigation risks associated with infringing your competitors’ trademarks. All in all, there are various complex issues involved with trademarks which are worthwhile thinking about.
Why should I register my trademark?
The more successful your company, the more valuable your brand becomes. Just think about global giants like BMW and Louis Vuitton, whose product quality is almost synonymous with their brand names. You deserve the ability to capitalise upon the goodwill generated by your brand, set apart your goods and services from that of your competitors, and ensure that your competitors don’t use your brand to label their own products.
Trademarks are very powerful in Australia. Once registered, it grants you the exclusive right to use your trademark as the brand name in the class the goods or services are registered. Your trademark also becomes your company’s personal property, which you can license authorised use to a third party. Most importantly, it grants you a much bigger voice in stopping your competitors from using your brand name.
You need to look no further than Apple to see the devastating consequences of not registering your trademark. China’s trademark system works on a “first to register” basis, and upon introducing the iPad to the Chinese market, Apple soon found out that its product name had already been registered by local “trademark squatters”. As a result, it had to pay over $60 million to own it’s own brand name. There were also a series of disputes over the UGG brand in the 2000’s which illustrated an Australian example of the importance of trademark registration.
What about the “™” symbol?
You might think it’s premature to register your trademark and instead choose to put the “™” symbol next to your logo. There is no registration process necessary if you wish to do this. Despite this, there are legal implications of using this symbol. In short, this symbol simply empowers your brand name with common law rights, and conveys to your competitors that you intend to enforce these rights in the case of infringement. At the same time, this method is usually of limited utility, as by nature, common law rights are much more difficult to enforce than statutory rights. As such, to be prudent, we recommend that company owners register their trademarks with IP Australia for a peace of mind.
What exactly can I trademark?
There are many elements which define your brand, and you would be surprised by what you can trademark in Australia. You can register an image, a text, a phrase or even a colour, packaging or scent. IP Australia provides a descriptive list of different types of trademarks, which you can view here.
Requirements for registration
There are numerous prerequisites to registering a trademark in Australia. IP Australia stipulates that the trademark you are registering must be used in relation to the product or service you are registering for. There may be some limitations on registering a common surname or geographical name, words which describe the quality or type of products you are offering, and a trademark which would infringe existing trademarks.
IP Australia has recently launched a revolutionary tool, the Australian Trademark Search. The Search performs image-recognition techniques to pick up similar trademarks from an enormous database considering of over 400,000 Australian trademarks. You can use this tool to ensure that your trademark does not infringe existing trademarks.
A number of recent Australian cases demonstrate that the registration is not a straightforward “rubber stamping” process which provides its owner with unlimited rights.
For example, in the recent case of CI JI Family Pty Ltd & Luong Huynh Ngo v National Australian Nappies (NAN) Pty Ltd and Nhut Thang Ho  FCA 79, the Court said that the registration of a trademark does not provide its owner with a venue to engage in conduct that is “misleading of deceptive” as prescribed by section 18 of the Competition and Consumer Act 2010 (Cth), or conduct which constitutes “passing off” at common law. This means that when you are registering your trademark, you should always be mindful of your competitors’ trademarks, and ensure that your registration does not create confusion in the market as to the goods and services involved.
The concept of authorised users also adds another layer of complexity to trademarks. As mentioned above, the owner of a registered trademark can license an authorised user to use its trademark. However, it was suggested last year in Lodestar Anstalt v Campari America LLC  FCAFC 92 that, as the owner of the trademark, you cannot take a completely “hands off” approach. You must take actual steps to exert control over the use of your licensees, through prescribing specific conditions in your contract. Otherwise, as the case illustrates, your licensees could potentially claim that the registration is removed due to non-use under s 92 of the Trade Marks Act 1995.
Domain and trademark registration
You might have already registered a website domain for your company. However, unlike trademarks, your domain does not provide you with any proprietary rights. Instead, it merely represents a license to use that domain name. If your competitor registers your domain name as a trademark, your license could be revoked by the regulatory authority, .au Domain Administration, as a result of trademark infringement.
The Bottom Line
Registering your trademark has many upsides and it provides proprietary protection for your brand. However, the area of law surrounding trademarks is complex and we recommend you to consult an expert lawyer to assist you.
What Should I Do Next?
* This blog is for general guidance only. Legal advice should be sought before taking action in relation to any specific issues.