To Register A Trade Mark Or Not To Register Trade Mark? - It Shouldn’t Be A Question

A trade mark, sometimes called a “brand”, is used to signify that products or services originate from a particular entity or business, are authorised by that entity or business, or are of a particular quality.  In short, it serves as a badge of origin and/or a guarantee of quality.

A trade mark may be any “sign” capable of distinguishing the goods or services of one trader from those of other traders.  The trade mark can be a word or words, a slogan, a logo, an aspect of packaging, a colour or colour combination, a shape, a sound, a smell or any combination of these.

Exclusive rights in a trade mark may either be obtained by use (aka “common law” rights) or by registration (aka “statutory rights”).  Of the two, statutory rights obtained by registration offer many benefits over simply relying on common law rights in a trade mark, including:

• early creation of proprietary rights without having to use the trade mark;
• creation of nationwide rights (common law rights are typically restricted to the area in which the trade mark has been used);
• no requirement for proof of use when enforcing;
• recordal of the rights on a centralised trade mark register, which provides notice, and a deterrent to other traders who may be thinking of using a similar mark;
• creation of a tangible asset that can be readily assigned or licensed; and
• a defence to any action for infringement of another trade mark.

Significantly, it is easier to enforce your rights in a registered trade mark than to enforce your rights under the common law.  Under the common law,  you need to prove that you have a reputation in the brand and that consumers were confused by the infringer’s conduct.

Ultimately, a registered trade mark may be the most valuable asset a business has at the end of the day.  For example, try to put a dollar figure on the iconic “G” of Google, which was protected back in 1999, or the name “Microsoft”, which was protected back in 1976 and grossed US$143 billion in 2002.  

Famous Australian and New Zealand registered trade marks include:  

• The plain word trade mark: VEGEMITE for vegetable extracts for use as food or as ingredients in food
• The plain word trade mark: L & P for mineral and aerated waters and other non-alcoholic drinks
• The fancy word trade mark: RM Williams for leather and imitations of leather, and goods made from these materials, and for articles of clothing
• The colour trade mark: for WHISKAS purple (CMYK: cyan 40%, magenta 100%) for cat food
• The sound trade mark: “Simples” in the name of Compare the Market Limited
• The sound trade mark: “Greensleeves” in the name of Mr Whippy for retail and wholesale services in relation to dairy products, ice cream and frozen confectionery
• The device trade mark: “Holden”  filed in 1961 for motor vehicles and parts thereof
• The device trade mark: for transportation services

Looking to trade mark something?

Trade mark law can be very tricky to navigate, that is why you could always approach a professional before diving into the paperwork. The team at Kings Patent and Trade Mark Attorneys are experts in trade mark law, with decades of experience. Contact Us today and we can help you with any enquiry you may have relating to trade marks