In order to ensure legal exclusivity for the use of your business name, product or logo, registering a trade mark is the quickest and most cost effective way to secure exclusivity and reduce the risk of adverse consequences to your business such as accusations of passing off and monetary claims being made against you.
Notwithstanding the risks to your business in the event that another entity puts forward accusations of passing off or misleading conduct, registration of a trade mark significantly reduces the risk of being prevented from using the business name, product or logo to which you have built your business and reputation around.
It is not mandatory to register a trade mark however we encourage our clients to secure registration given the substantial benefits it provides with respect to commercial protection of your business and its trading potential. Trade mark registration offers the following benefits:
- In most cases, a trade mark registration confers nationwide rights covering the entire Commonwealth of Australia which can then be extended to international jurisdictions;
- In the event that a subsequent application is made by a competitor within your industry for registration of a similar mark, a registered trade mark will be an obstacle to any such application. It makes it very likely that IP Australia will issue an examination report preventing registration in light of conflicting trade marks that may mislead or confuse consumers;
- Legally enforceable rights upon a registered trade mark are conferred under legislation that make it far easier, more certain and less expensive to enforce rights in a registered trade mark than in one that is not registered;
- The exclusive right to use your registered trade mark as a brand name for the goods or services specified in the registration is secured;
- The exclusive right is conferred to authorise other people to use your registered trade mark for the goods or services specified in the registration;
- Once a trade mark is registered it becomes personal property which is capable of being sold; and
- You gain the right to give the Australian Customs Service a notice objecting to the importation of goods that infringe your registered trade mark.
While some protection is afforded in terms of unregistered rights by virtue of the common law, such protection is extremely limited by evidentiary requirements and should not be used as safety net for non-registration.
For example, unregistered rights to business names or logos, if found at all, only exist where a substantial reputation has been developed in the relevant mark and this is notoriously difficult to prove.
In the event an unregistered right is found, this right is then limited within the geographical area in which the substantial reputation can be shown to exist. The importance of registration of trade marks is clearly apparent in allowing your business to expand outside what are otherwise limited geographical constraints.
Consequences of Non Registration
Knowingly using another entities name, logo or product, can lead to accusations of ‘passing off’ meaning to wrongfully appropriate someone else's business reputation. Passing off is a common law action which protects goodwill and reputation, built up by the use of a trade mark or business name of a product or service. Actions made on the basis of passing off generally involve situations in which a representation is made in the course of trade, which deceives or causes confusion amongst consumers. Accusations of passing off can be extremely damaging and may lead to monetary claims being made against your business.
Misleading or deceptive conduct in terms of using another entity’s name, product or service is also prohibited under the Competition and Consumer Act 2010 (Cth) and such conduct constitutes an offence to which the remedies for the aggrieved party include injunctions and monetary damages.
The above consequences can arise even if you do not intend to carry out misleading or deceiving actions, demonstrating the necessity of trade mark registration to avoid doubt, potential conflict or damage to your business in both a financial and reputable sense. With the above consequences in mind, we strongly recommend that our clients register their business and/or product names at the onset of their business operations.
Ramsden Lawyers Commercial Services
The commercial team at Ramsden Lawyers can assist you and your business in all aspects of trade mark registration from:
(a) advising you on important considerations and compliance issues;
(b) initial searches to establish registerability of a trade mark;
(c) filing trade mark applications and all associated advice;
(d) advising on and responding to examination reports provided by IP Australia;
(e) advising and responding to any opposition applications filed by other trade mark holders seeking to prevent registration of your mark;
(f) filing opposition applications to prevent another entity’s use of your trade mark;
(g) advising you on the appeal process against a decision made by IP Australia to refuse registration of a trade mark through the Australian Administrative Tribunal;
(h) filing and advising on applications for removal of a trade mark for non-use; to
(i) advising you in the event accusations of passing off or misleading or deceptive conduct on your part are made.
Please contact our team at Ramsden Lawyers on 0755 921 921 to find out how we can assist you in relation to trade mark registration and all of your commercial needs.