When we think of trademarks, what is the first thing that springs to mind? A brand image, logo, or slogan? These are all correct. However, a trademark can be an amalgamation of all of these things, plus lots more. For example, the colour brown in UPS is legally trademarked by the company and use of this colour elsewhere is strictly forbidden and against trademark legislation.
One of the main reasons companies trademark certain aspects of their identity is to differentiate themselves from competitors. A strong brand has an equally strong image to maintain. As their company succeeds, as does their trademark increase in value. As a result, consumers begin to associate particular trademarks with reputable and trustworthy brands and are more likely to purchase goods/services from them.
At AV Lawyers, we hear from numerous businesses who are unsure of the process of trademarking a particular company identity. We also advise on ways to converse with third party companies who may be infringing on your current trademark. What are the challenges of trademarking and how exactly do you overcome them?
What is a trademark?
A trademark is simply a business obtaining exclusive rights over said mark, with a licence to sell and distribute it amongst the market. It is a clear way to legally distinguish your brand amongst your competitors. Anyone who counterfeitly uses trademarked products is in breach of the law and may be subject to court orders and hefty fines.
What is not a trademark?
A trademark is not a business name, website landing page, or a company name.
The Australian Securities And Investments Commission requires all Australian businesses to operate under a trading name. This does not stop others from using your trading name to promote their business.
A trademark is also not a design. So, for example, a bus seat with inverted back support is not able to be trademarked as it is simply a design. The colours of the fabric used on the bus seat, however, can be trademarked.
Why do I need a trademark?
Trademarks can provide multiple benefits to businesses. It is important to understand just why you should consider trademarking your company.
|Legal protection||Protect yourself against third parties who may try to infringe against your trademark.|
|Reassurance||Stops third parties from using this trademark.|
|Banking ease||Some banks may not allow you to open a business account if your business is not trademarked.|
|Future security||Australian trademarks last 10 years, with the option of renewing each trademark before their time is up.|
How does the trademark process work?
The trademark process works in a similar fashion compared to other countries. Completed applications must be filed with IP Australia and examined for compliance, formalities, and substantive requirements. These could be registrability or confusing similarity with a similar trademark. All of these requirements are governed and dictated by the Trade Marks Act 1995 (Cth).
If your application is authorised, it must then pass a three-month probationary period for opposition purposes. This allows third parties to oppose the registration on warranted grounds. If no oppositions are received, or if any oppositions received are formally discredited, a certificated trademark registration will be issued to you.
However, if your business fails to use your registered trademarks within three years of it being issued, you may be liable to have your trademark cancelled on grounds of non-use.
If it’s as easy as filling out a form, why should I hire a lawyer to do it?
Lawyers who specialise in trademark applications understand, in deep complexity, what an examiner is looking for when they review your application. They understand why certain applications are rejected, and what aspects of your mark are more likely to be approved than others.
Secondly, a trademark application must be crafted in the language that sets the most secure legal rights for your mark. A trademark lawyer is able to construct an application that covers all possible rights for your trademark, and also knows the language needed to make your rights as widespread as possible. This gives you peace of mind when using your trademark is different regions, settings, and scenarios.
What are some common misconceptions about trademarks?
A certified lawyer can help explain these in more comprehensive detail, but here are a few common misconceptions surrounding trademarks.
“Trademarks are the text I use to describe my company name and mission”
Incorrect – Whilst the standard opinion of a trademark is widely thought of as “words” or “slogans”, a trademark can actually encompass many different branding aspects. Take for example EA Sports. The voiceover which states at the beginning of the computer game “EA Sports, it’s in the game” is trademarked against other competitors using similar sounding phrases within their branding.
“I must search for similar trademark registrations to my product before I begin any procedures”
Incorrect – A trademarking procedure will automatically check to see whether your proposed trademark is infringing on existing registrations. If your trademark is found to be too similar to another in the marketplace, it will be rejected automatically with no need for you to check yourself. This would also alert you to competitors in your market. Saving you time, money, and hassle
“The ™ and ® symbols are the same. It doesn’t matter which ones I use”
Incorrect – Whilst similar in context, the two symbols have completely different meanings and uses. The ™ symbol shows third-party companies that you are using your trademark for your services or products. It also demonstrates that your application to own the trademark is pending, or if common law rights are endowed upon your service or product.
The ® symbol is used when you federally own a registered trademark and its entirety.
What is the difference between a trademark and copyright?
Trademarks and copyrights are both forms of intellectual properties used by businesses. However, it’s important that you distinguish between the two in order to protect your business accordingly.
|Protects forms of your work||✔️||✔️|
|Promotes your business||✔️||✖️|
|Helps protect unique products||✔️||✖️|
|Protects text, artistic works, sound recordings, films, and computer programs||✖️||✔️|
|Can be assigned to another party||✖️||✔️|
|Can protect you against infringement or illegal use of your products brand||✔️||✔️|
The main difference between a trademark and copyright is the process through which businesses must adhere to in order to obtain each licence.
Furthermore, the time restraints on both intellectual properties are significantly different. Copyright lasts for a substantially longer time than a trademark. The average shelf life of a copyright can be the entire lifespan of the creator, plus 70 more years past the date of their death.
A trademark licence must be renewed every 10 years and, as discussed previously, must be used within the marketing, advertisement, or promotion of the product/service within the first three years of the licence being obtained.
What to do next?
Hiring a lawyer to apply for a trademark licence for your product alleviates the time you would need to independently take to apply for the registration and the possibility of mistakes occurring during this laborious task. A certified lawyer is able to manoeuvre the entire lengthy process easily and will be able to answer any questions that will most certainly arise during the trademarking procedure.