1. What is a trade mark?
2. Is a registered business name the same as a registered trade mark?
3. Is trademark registration compulsory?
4. What are the symbols ™ and ® used?
5. When can you apply for registration of a trade mark?
6. Is it a good idea to have a search carried out before adopting a Trade Mark?
7. What is the procedure to get a trade mark registered?
8. Can identical or similar marks be registered?

What is a trade mark?

A trade mark is a sign used to indicate the goods or services of a particular trader to customers. Normally the first user of the mark in Australia is the owner of the mark in this country, assuming the mark has not been transferred, abandoned or unlawfully obtained.

Trade Marks in Australia may include:

Words eg. NIKE (for clothes), McDONALD’S (for restaurants)
and HOLDEN (motor vehicles)

Initials eg. CSR (for sugar), TDK (discs for recording)
and GM or GMH (motor vehicles)

Logos eg NIKE stylised with tick (clothes) or GM stylised
Lion with ball (motor vehicles)

Colours and colour combinations eg. BP’s green and gold (fuel)

Shapes eg. Coca-cola bottle

Smells and sounds are also registrable.Return to Top

Is a registered business name the same as a registered trade mark?

No. A registered trade mark gives the right to take action against third parties for infringement. Business names do not give you such rights.Return to Top

Is trade mark registration compulsory?

Trade mark registration is not compulsory. Protection against misrepresentation is possible under trade practices and fair trading legislation. It is also possible to take time-consuming and expensive action under common law. Protection of such unregistered rights requires substantial proof of reputation in the mark that adds to the cost of litigation. However, trade mark registration is a more cost effective way of protecting an important aspect of your business.Return to Top

What are the symbols ™ and ® used?

The symbol TM is commonly used to denote the use of an unregistered trade mark, whilst the symbol ® is used to denote a registered trade mark. Examples CheezyPeezy™ and Cheezy Peezy®. There is no onus on trade mark owners to use these symbols, however we can advise you as to how use these symbols on your products, packaging, advertising and websites.Return to Top

When can you apply for registration of a trade mark?

An owner of a trade mark already being used may apply for registration of the trade mark. Furthermore, an application may be made by a person intending to use a trade mark?Return to Top

Is it a good idea to have a search carried out before adopting a Trade Mark?

Yes it is a good idea to have a search carried out before adopting a trade mark. A search can assist you in ascertaining whether third parties have rights in a similar or identical mark for the goods and services of interest to you.Return to Top

What is the procedure to get a trade mark registered?

An application is filed with an indication of the good/services for which the mark is used or intended to be used. The goods and services are divided into 45 separate classes, and fees are payable for each class indicated in the application. The application is examined, and will not be registered if the trade mark is:

• descriptive and likely to be used by other traders;
• substantially identical or confusingly similar to another mark for the same or closely related goods or services;
• or use of the mark is likely to cause confusion in light of the existing use of a similar mark by a different owner.

If such objections are raised your trade mark attorney may possibly overcome them depending on their nature. For example, if the Trade Mark Office rejects your mark on the basis of descriptiveness, then demonstrating you have a reputation in the mark by having used it for a considerable period, may overcome such rejection. If your trade mark application is accepted it will undergo a 3 month period in which third parties may oppose it. Assuming no opposition is raised the mark will proceed to registration upon payment of a registration fee.Return to Top

Can identical or similar marks be registered?

Yes. Identical or similar marks may co-exist on the trade mark register for different goods or services by different owners. The goods/services must be different enough such that no confusion will arise in the marketplace (eg. GALAXY – for motor vehicles or textiles). However, famous marks have rights extending beyond similar goods/services.Return to Top