Trade Marks 101

Registering a trade mark is likely to make sense in the following circumstances:

• You want to stop anyone else from using it.
According to common law, the person who uses a trade mark first is the owner, unless someone applied to register it beforehand. So it’s either ‘first to apply’ or ‘first to use’, whichever comes first. Let’s say you haven’t used the trade mark yet, but have plans to use it in the foreseeable future. If you delay and don’t use it and someone comes along in the meantime and registers it, you’ve lost the trade mark. By applying to register you can buy yourself time while making your plans, effectively ‘reserving’ the trade mark for future use. But don’t wait too long. You should be using it in a commercially realistic time frame.

• You want to expand into other states
So, you’re trading in NSW right now, but your business plan has you expanding into all other states in the future. The law will only give you protection ‘where your reputation lies’, meaning where the trade mark is
used, in this example, NSW. The courts aren’t interested in helping you stop someone in another state. But, since trade mark registration is Australia-wide, it keeps the whole country open to you as a potential
market for at least a few years.

• You plan to license or franchise the brand
Licensing and franchising is all about maintaining control, so registration of your trade mark is virtually essential, to give you the statutory right to control the brand. Without that right, it can become very difficult to keep your licensees or franchisees toeing your line.

• Your company owns the IP and related companies use it with your permission
Trade mark registration is essential in this model because of the common law requirement that a trade mark has to be used before it even exists and it is owned by whoever uses it. So the idea of one entity owning the trade mark and another entity using it makes no sense at all under the general law. But under the Trade Marks legislation, providing the mark is registered, it makes perfect sense and is commonly used. For example, a parent company may have several subsidiaries operating in different markets or industries but under the same brand.

TM or ®? What’s the difference?

The TM symbol can be used next to a mark – logo, name, brand, product, image – at any time, whether the mark is registered or not. For example, if you were keen to flag to others that you are prepared to protect your patch, while waiting for trade mark registration, adding the TM could add weight.

Only registered trade marks are permitted to use the ® symbol. Its role is to demonstrate clearly you have registered the mark and have the right to use it. You need to remember that registration doesn’t give you a lifetime guarantee that no one will try to use your trade mark. Rather, in practical terms, it gives you the right to protect your mark by prosecuting others for infringing it.

Let’s not forget the ‘how’ of trade marks. Just as a market garden needs attention to remain productive, a trade mark portfolio also needs regular attention, weeding out the weak marks and cultivating the strong, productive ones.

You could DIY – undertake the vital prior searches, develop your mark, apply for registration, monitor registrations that may pose threats to your mark, ensure renewal deadlines are met, vigorously prosecute
infringements.

Or, taking the gardening analogy a bit further, you could choose to appoint a qualified horticulturalist – a specialist trade mark attorney – to help you get the most from your investment in IP, make sure you don’t
miss the important things. This could potentially save you money by making sure your IP garden is well-tended and protected from threats, plus your specialist trade mark attorney can also act as an IP sounding board to help you make strategic decisions.

Whichever route you choose to take, the three main points to remember with trade marks are:

1. Prior searching is essential;
2. Trade mark registrations have ‘use by’ dates;
3. Active protection of your mark is a must.

Wayne Willis is a partner with F B Rice & Co | Patent & Trade Mark Attorneys, and specialises in working with Australian businesses to develop and implement strategic plans for protecting their trade marks domestically and overseas www.fbrice.com.au

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