5 Common Trade Marks Myths

by LegalVision - Justin Ocsan

A trade mark is how a business distinguishes itself in the market. Common forms of trade marks are a business’:

  • name;
  • logo;
  • slogan; or
  • packaging.

 

Having an unregistered trade mark by itself does not necessarily give you exclusive rights. You must register your trade mark with IP Australia to gain exclusive rights to use it and this includes the option to license or sell your trade mark. This article will discuss five other myths commonly associated with trade marks.

  1. Registering Your Business Name is Enough

There is a common myth that registering your business name with the Australian Business Register (ABR) gives you the same exclusive rights as a registered trade mark. A registered business name is how the government identifies you for tax and administrative purposes. However, it does not give you exclusive rights. Furthermore, there are additional conditions that you need to satisfy when registering a trade mark. For example, you cannot register a trade mark that is too descriptive. You can register ‘Joe’s Retail Shop’ as a business name, but would likely be denied for trade mark registration. If ‘Joe’s Retail Shop’ were in St Kilda, it would not stop someone in Richmond trading as ‘Joe’s Retail Shop Richmond’. While these might be two different businesses, consumers may associate the Richmond shop as a branch of the original shop in St Kilda.

  1. Registering Your Domain Name is Enough

Similarly, registering your domain name does not give you exclusive rights to use your business name. Registering your domain name gives you exclusive rights over that domain name, including the right to sell or license the domain. However, it does not prevent others from trading under a similar or identical business name. For example, securing LegalVision.com.au does not in itself stop anyone else from trading under ‘LegalVision’.

  1. Charities or Not-for-Profits (NFP) Are Not Required to Register Their Trade Marks

A charity’s goodwill is one of its most valuable assets. Goodwill allows the charity to secure funding and support as the public will associate its name with causes they believe in. As a charity, it is worth registering your trade mark to prevent other organisations (whether commercial or other charities) from using similar sounding names to feed off your goodwill.

  1. Using the TM Symbol Informs Others That You Have Registered Your Trade Mark

The correct symbol to notify others that you have registered rights over your trade mark is the ® symbol. The TM symbol still has some uses though. Generally, it takes seven to eight months for IP Australia to approve your trade mark registration (if there are no obstacles). You can only use the ® symbol once IP Australia accepts your registration. However, you can use the TM symbol during this interim period to inform others of your rights in the trade mark, even though the process isn’t finalised.

  1. IP Australia Will Police Your Trade Mark

IP Australia does not police your trade mark. IP Australia will only raise objections when a business submits a trade mark application. IP Australia will then examine the application to determine if there is a conflict with an existing registered trade mark or if the trade mark should not be registered on other grounds. If a competitor’s application passes through this process, it will be up to you to object to the trade mark if it conflicts with your own. Unfortunately, IP Australia does not inform you of any potential conflicts so you will need to check the Trade Mark Register regularly. We recommend every two to three months to avoid any deadlines for objection.

Key Takeaways

A trade mark can be a valuable asset for any business. Registering a trade mark can be a relatively easy process, but there are common myths you should be aware of, such as:

  • registering your business name is enough;
  • registering your domain name is enough;
  • charities don’t need to register their trade mark;
  • using the TM symbol when you have registered your trade mark;
  • IP Australia will police your trade mark.

 

Being aware of these myths will help you properly register and protect your trade mark and to ensure that your reputation and goodwill remain intact.



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