Article By: Sarah Cappello Cappello Rowe Lawyers Sydney

Generating reputation in the market is essential to any business. Think about when you are shopping for a new pair of running shoes. You enter the Nike store and you are immediately greeted with the Nike Swoosh and the phrase ‘just do it’, both of which are well known trade marks. These trade marks function as a shortcut for customers as to the type of product they are purchasing and the type of brand the business wants to convey. In this sense, trade marks are a key asset that businesses seek to protect.

What is a trade mark?

A trade mark, by definition, is a ‘sign’ used (or intended) to be used to distinguish products or services dealt with or provided in the course of trade. It is useful to think of a trade mark as a ‘badge of origin’ – a way for customers to identify a distinctive product or service. 

A trade mark can not only contain words or logos. A trade mark can also include sounds, movements, colours (for example, Tiffany & Co’s ‘robin egg’ blue colour), shapes (think the Coca Cola glass bottle), even scents or any combination of these.

There are two types of trade marks – unregistered and registered trade marks. The type of trade mark impacts the relevant legal avenue to protect the trade mark.  

Unregistered trade marks

Under Australian law, there is no requirement for trade marks to be registered in order to gain protection. Therefore, an unregistered or common law trade mark refers to the use of signs to distinguish goods or services.

It is important to remember that the registered trademark symbol ® can only be used with a registered trade mark. However, ™ can be used with both registered and unregistered trade marks. 

Registered trade marks

A registered trade mark includes a mark that has been accepted by IP Australia and issued a trade mark registration. Subsequently, the trade mark will be recorded online on the Australian Trade Marks Register. 

Protecting an unregistered trade mark

You may be able to stop another party from using the same or similar unregistered trade mark, if you can establish:

1. The tort of ‘passing off’ under common law; and/or
2. Misleading and deceptive conduct under section 18 of the Australian Consumer Law (ACL). 

Passing off 

To establish an action for passing off three elements must be established, including goodwill or reputation, misrepresentation and damage or likely damage. Diluting or cheapening of reputation can be considered damage. 

Relevant evidence would need to be adduced to satisfy each of these elements. Generally, it can be quite expensive and difficult to prove reputation and that consumers are likely to be confused by the infringer’s conduct. 

Misleading and Deceptive Conduct 

Section 18 of the ACL prohibits a person from engaging in conduct that is misleading or deceptive (or is likely to mislead or deceive), in trade or commerce. 

In order to establish misleading and deceptive conduct, the court must be satisfied that the conduct in question is likely to mislead or deceive the relevant class of consumers that are likely to be affected by the conduct. This would also require you to prove that you established sufficient reputation in the mark. 

A typical example is when consumers are misled into believing that there was some association between the infringer and your goods or services. 

Protecting a registered trade mark 

Registered trade marks can not only be protected in the same way as unregistered trade marks, but are also offered additional protection under the Trade Marks Act 1995 (Cth) (TMA). 

Section 120 of the TMA prohibits a person from using a mark that is substantially identical with or deceptively similar, to a trade mark on the same or similar goods or services. This means that in contrast to the avenues for protecting an unregistered trade mark, there is no requirement to establish reputation in the mark in order to stop a third party infringing the registered trade mark. 

Why you should register your trade mark

In light of the above, there are many advantages to registering your trade mark, as opposed to relying on an unregistered trade mark, including:

1. It is generally more cost effective than relying on the remedies available to protecting unregistered trade marks as:

1. There is no requirement to establish prior use or reputation in the mark, making protection immediate (once registered).  
2. There is no need to prove ownership of the trade mark by way of evidence. Generally, the owner of the trade mark will be the applicant for registration. This is evident on the certificate of registration once the trade mark is registered.   

1.  The owner of a registered trade mark can sue infringers for trade mark infringement under the TMA, while the owner of an unregistered trade mark cannot.
2. A registered trade mark is considered intangible personal property and is often a valuable business asset. This means that it can be sold, assigned and licensed to another party for a commercial benefit. 

If you would like more information on protecting trade marks or need some advice, please contact us on 02 8325 1520 or email info@cappellorowe.com.au