• The terms are often used interchangeably and this is largely correct. However trade marks are the signs (typically words or symbols) that are registered for use by a single company.  
• A trade mark functions as a ‘badge of origin’ identifying the source of branded goods or services.

• In contrast with trade marks company and business names are simply corporate identifiers and do not confer proprietary rights. The mere registration of a company name or business name creates no legal rights whatsoever.  
• The fact that you obtain registration of a company name or business name does not by itself give you legal title to the registered name which will stand up to litigation challenging your right to that name. 
• Once you begin using your company or business name then you start to build a reputation and that reputation may be protected by an action for passing off or by recourse to consumer protection statutes.

• Yes there is value. Your brand may be one of your most valuable assets and registered rights protect you against it being used by a third party. 
• Trade marks may also assist you in expanding your business through commercialisation and marketing.

• Provided you renew your registration every ten years by paying the renewal fees it can last indefinitely. 
• However there is scope for a third party to attack a trade mark registration on a variety of grounds including non-use of a trade mark.
• Given that the registration can potentially last forever it makes sense to ensure that you file correctly at the outset and plan to use your trade mark properly.

• Your Australian registration will only protect you in Australia. Registration of a similar trade mark in another country may block your use of your Australian registered trade mark in that country.
• The issues are complicated when your business is online and if your goods and services are available to the world or at least in multiple countries.  
• The costs of registering everywhere may be prohibitive. Your trade mark protection strategy requires a careful assessment of your: 

1. business plans;
2. intended use;
3. countries of interest;
4. risks; and 
5. costs.

• A trade mark is a symbol which distinguishes one business from other businesses.
• A trade mark is also called a ‘brand.’
• It can contain words or logos or a combination of both.

• Yes. There are 45 different ‘classes’ of trade marks: 

1. 34 classes for goods; and
2. 11 for services. 

• Each class categorizes goods and services according to an area of trade and is identified by a number. 
• Deciding upon the appropriate class or classes can be difficult. For example photography is mentioned in 5 different classes but engaging the services of a photographer is only included in 1.
• The registration fee depends on the number of classes you need your trade mark to be registered under.

• If you have a business and do not register your trade mark you run the risk that someone else could:

1. copy your brand and register it for themselves forcing you to find another trade mark; or
2. carry on a business using your trade mark or one similar. They could then benefit from the goodwill of your business or alternatively damage the reputation of your business.

• Registering a trade mark gives you special rights including that:

1. it is owned by you. You can sell it or licence others to use it for a fee;
2. it allows you to protect your trade if someone else uses your trade mark; and
3. it allows the police to charge counterfeiters with criminal offences.

• No. Owning a domain name does not protect your trade mark. If you want to protect your trade mark you must register it.

• No. Registering your business name and obtaining an ABN (Australian Business Number) does not protect your trade mark. If you want to protect your trade mark you must register it.

• Trade marks must be distinctive for the type of business you run in order to be registered. 
• A registered trade mark must allow consumers to be able to differentiate the products or services you provide from other businesses.
• Made up words are usually acceptable as trade marks. For example:

1. Qantas;
2. Bupa; or
3. Panadol.

• Words involving recognizable names are acceptable if not already registered:

1. David Jones;
2. McDonalds; or
3. Sarah Lee.

• • Regular words used in different ways can also be registered:

1. Apple Computers;
2. Gumtree Classifieds; or
3. Mushroom Records.

• A trade mark that describes your goods or services or their characteristics cannot be registered. For example:

1. High Heel Shoes;
2. Swedi.sh Furniture; or
3. Paperback Books

• A trade mark that uses a description that is customary in your line of business cannot be registered. For example:

1. Baked Bread;
2. Natural Gas; or
3. Flat Screen TVs. 

•  A trade mark that uses a common description but which intentionally misspells some of the words also cannot be registered. For example:

1. Plaztic Rap; or
2. Kat Food.

• A trade mark will also be rejected if it:

1. includes offensive words or images;
2. is against the law in any way for example promoting illegal activities; or
3. is misleading or deceptive for example attempting to persuade the public that your goods and services have a quality which they do not.

• Trade mark: Open 7 Days                            
  Business: Convenience store.            
  Acceptable?: No. Many stores are open 7 days a week.

• Trade mark: Zoom 7 Days                           Business: Convenience store              
  Acceptable? Yes.

• Trade mark: Clothes Online                       Business: Online clothing                      
  Acceptable? No. This is not distinctive enough. Note that adding .com.au will not help.

• Trade mark: Brass Pineapple                    Business: Online clothing                      
  Acceptable? Yes. This would be acceptable for
  clothing as it is not common usage. However it may not be sufficiently distinctive for food or metalware.

• Trade mark: GoodOil                                    Business: Engine lubricant                  
  Acceptable? No. Putting words together does not make a mark more distinctive.

• Trade mark: Macca’s GoodOil                  
  Business: Engine lubricant                  
  Acceptable? Yes.

• Trade mark: Shopping.com.au                
  Business: Internet shopping              
   Acceptable? No. Using an internet address does not make a mark more distinctive.

• Trade mark: Bumpa.com.au                      Business: Internet shopping                
  Acceptable? Yes.

• Trade mark: Kat Food                                   Business: Pet food                                    Acceptable? No. Merely misspelling words is not distinctive enough particularly if they sound the same when pronounced.

• Trade mark: Kosta’s Kat Food                   Business: Pet food                                    Acceptable? Yes.

• Yes as long as:

1. the word does not describe your products or services;
2. the word is not already registered to another business or is similar to the registered trade mark of another business in the same or similar industry;
3. the word is not indecent or offensive;
4. the word does not promote illegal activities; or
5. the word is not misleading or deceptive.

• Trade mark applications may be refused if the trade mark has:

1. an aural similarity to an existing registered trade mark; 
2. for example ‘eBuy Auction Website’;
3. a visual similarity to an existing registered trade mark;
4. for example a picture like the Campbell’s Soup logo with the name of your own brand of soup in the same writing;
5. a conceptual similarity;
6. for example Maree Cleaners and Mary Cleaning Products.

• More than one business can own the same trade mark as long as their areas of business do not overlap for example ‘Magic Day Spa’ and ‘Magic Accountants.’

• If you use the registered trade mark of another business that offers the same or similar products or services as you do then you could be subject to legal action or criminal charges. 
• This is so even if the trade mark is registered in a different class to your business.
• The only way to be protect yourself and your business is to conduct thorough research before designing and settling on your marketing plan for your business and register your own trade mark.

Question

• I have a genius idea for a new mouse trap. Can I trade mark this?
• Answer
• Trade marks protect branding elements not ideas. If the new mousetrap is sufficiently novel and inventive it may qualify for patent protection and you should explore that as soon as possible and particularly prior to disclosing your idea to anyone. If the product has a new look then design protection may be appropriate.
• No doubt your new mousetrap will have a name and brand identity. As your business progresses your brand may become very valuable. In fact your brand identity could possibly become even more valuable than the product design and invention itself. 
• You should initiate searches and register trade mark protection so that you can select and protect a strong brand from the outset.

Question

I am launching a clothing label in Australia. I am aware of a business in the United Kingdom with the same brand name but they look to be small. Am I OK in using this?

Answer

• Trade marks are territorial rights. You should conduct thorough searches to see if this UK trader has registered its trade mark in Australia, Europe and possibly other countries.
• Checks need to be made as to whether there have been any sales made and reputation established in Australia because even if small it may be that some sales constitute trade mark use and therefore give rise to superior rights.
• Consider applying to register your trade mark in Australia to improve your position from a defensive position.
• Even though there may be no conflict in the respective marketplaces there may be conflict online. Thorough checks are warranted to assess whether it would be desirable to co-exist with this other brand especially in relation to social media. Also the existence of this other trader may be a direct obstacle to your expansion into other markets if your clothing line takes off.

Question

I have identified a new name for my business and have conducted some searches. There seem to be a number of other traders with the same or similar name. I am unsure what to do as I really like the name.

Answer

• Thorough searches are warranted to see if these other traders are in the same field as your intended use and it they have registered trade mark rights or superior trade mark rights through use.
• It still may be possible to use the name in a crowded field because it may be that relatively small differences may serve to distinguish one trader from another. However this requires careful analysis.
• Regardless of the trade mark position you should ask yourself whether it is desirable to have a brand which is so similar to others. Consider selecting and protecting a more distinctive brand.

Question

I successfully registered my trade mark a year ago myself with no problems. My business has gone very well and there are prospects to sell my products overseas. Do I need to do anything?

Answer

• Consult with a trade mark expert to ensure that your Australian trade mark reflects your branding and covers what you currently do and conceivably could do.
• There are several options for searching and protecting your mark overseas. These will depend very much on your countries of interest, budget and timing.
• Also consider the commercial opportunities and the best method for manufacture, sale and distribution. A specialist lawyer can advise you on contracts such as manufacture, licensing or distribution to ensure that you have a tight contract with your future foreign business partners.

Question

Apparently my mark cannot be registered in less than six months. Do I need to wait this long before commencing use?

Answer

• No. However it is prudent to conduct comprehensive searches to identify potential obstacles to use and registration before committing to the brand, investing in advertising and commencing use.
• Consider applying for expedited examination to secure at least an accepted application or clarification of any objections as soon as possible.

Question

I have completed a trade mark search. Is this enough?

Answer

• It depends what the search comprises. At the very least you should include searches of: 

1. the Trade Marks Office database for substantially identical and deceptively similar marks; 
2. the Australian Securities and Investments Commission (ASIC) database for company and business names;
3. relevant directory searches;
4. corresponding domain name searches;
5. corresponding social media names; and 
6. general internet searches.

Question

I have applied for a trade mark for my business but it hasn’t yet been approved. In the meantime should I use the ™ symbol?

Answer

• It is not a legal requirement to use the ® and ™ symbol to identify your trade mark however it is preferable to do so.
• The symbol ™ may be used with any registered or unregistered trade mark.
• The symbol ® may be used with any registered trade mark in the territory within which it is registered. 
• It is an offence under the Trade Marks Act to use the symbol ® with any unregistered trade marks. The mere filing of a trade mark application does not mean that a mark is registered. It must achieve the status of registered at the Trade Marks Office.
• If you are settling packaging or promotional material which might be used in countries where you are not registered it may be preferable to use the ™ to convey that you claim trade mark rights even if they are not registered. This way you may not contravene laws prohibiting representations that a mark is registered when it is not.

Question

I own the copyright over a script I had written and published online. I am worried that someone is going to use it without permission and acknowledgment. If someone does use it how can I prove that I own the copyright? 

Answer

• Unfortunately in Australia there is no registration system for copyright and any dispute about who owns copyright must be resolved in court.
• It is a good idea to keep a record of your work in case you need to prove in court that you created the script. Records can include:

1. drafts or writer’s plans;
2. any research you did to write the script;
3. who you discussed your work with;
4. who read or edited your work; and
5. when and how you published your work online. 

• You must be proactive if you think someone infringes your copyright. This may mean taking legal action against the person who infringed the copyright.

Question

I am a university student and due to struggling finances cannot afford to buy a textbook. Is it okay for me to photocopy the book at my university library? 

Answer

• Textbooks are copyright protected and photocopying them in entirety would be considered as a copyright infringement. 
• Students are generally entitled to copy a reasonable portion for research and study purposes. This usually means one chapter or 10% of the pages from a book. 

Question

I design computer programs as a hobby. I want to know if there are any restrictions on how I can use my new computer program. 

Answer

• As an owner of the copyright you have the exclusive or absolute right to do whatever you want with your work including:

1. reproducing it in any manner; and
2. sharing it through any medium and to any persons in the public. 

• Since you own the copyright for the new computer program you have made you may also choose to rent out CDs containing your program for testing and distribution purposes.