What is a trade mark?

A trade mark is a distinctive sign used by a business to uniquely identify itself to consumers as the origin of its products and services. A trade mark also distinguishes the business and its products or services from those of other businesses.

Typically, trade marks consist of words, numerals, letters, devices and logos. However, sounds, colours, scents and shapes are also capable of being registered as trade marks.

A trade mark may be your most valuable marketing tool, with the public identifying you as the origin of the goods and services bearing your trade mark.

Examples of registered trade marks include Tiffany & Co’s blue box packaging, Weber’s distinctive round barbeque shape and the name “Apple” in relation to computers.

Why should I register a trade mark?

Registration of a trade mark gives the owner the following rights:

·         The exclusive right to use the mark in relation to the goods and services listed on the registration;

·         The right to license the use of the mark to a third party;

·         The right to assign and sell the mark;

·         The right to stop substantially identical or deceptively similar marks being registered with respect to similar goods and services; and

·         The right to prevent other persons from using a mark that is substantially identical or deceptively similar to your mark on or in relation to similar/closely related goods and/or services by initiating legal proceedings for infringement under the Trade Marks Act 1995 (Cth).

There are legal avenues which you may take to protect unregistered trade mark rights, however, these actions are more difficult and costly to establish than trade mark infringement proceedings under the Trade Marks Act.

Importantly, it should be noted that a registered trade mark is different to a registered company or business name. Company and business name registrations only serve to enable the public to identify which traders they are dealing with. Proprietary (or ‘ownership’) rights in a name only subsist when they are protected by a registered trade mark.

Our Services

mdp McDonald Partners can help you with any queries about creating or protecting your trade marks, as well as how to avoid infringing other trade marks. Here are just some of the types of matters we handle regularly:

·         Advising on trade mark registration or infringement;

·         Registration of trade marks;

·         Sale and assignment of trade marks;

·         Advising on risk protection and corporate structure issues relating to trade mark rights;

·         Licensing advice and preparation of agreements; and

·         Trade mark litigation.

Trade Mark Publications

·         Case Study: Kylie Minogue worldwide trade mark portfolio

·         Case Study: eGroup Insurance strategic branding and trade mark prosecution matters

·         Case Study: Mattel Pty Ltd enforcement action for Barbie and Hot Wheels

·         Case Study: Teenage Mutant Ninja Turtles (TNMT) licence agreements, distribution agreements and enforcement action

·         Case Study: Ecology Homeware