Do I need a registered Trade Mark?

There is a widespread assumption that business owners operating under a registered business name automatically entitles them to automatic intellectual property protection, however this is not the case. More often than not, business owners are caught in an impostor face-off with another individual using, marketing and advertising their business name with no recourse because they did not safeguard their intellectual property through trademark protection.

Understanding Trade Marks

A trade mark is a form of brand protection which distinguishes between your goods and services from those belonging to your competitors. Whether it be a logo, number, word, phrase, movement, packaging or all of the above – registering a trade mark guarantees you the exclusive rights to use, licence and sell the mark.

When applying for a trade mark on IP Australia, you are required to submit an application for examination (which generally takes up to four months). Once an examiner accepts the application, it will be advertised for opposition purposes for an additional two months. During this period, competitors will have the opportunity to file a ‘notice of intention to oppose’ the registration of the trademark for reasons such as:

1. the applicant is not the true owner of the trade mark;
2. the applicant does not intend to use or authorise the use of the trade mark in Australia; and/or
3. the applicant filed the application in bad faith.

On the basis that no opposition is filed or IP Australia accepts the application despite any opposition files, IP Australia will accept and register the trademark for a period of ten years.

Once your business name is registered as a trade mark, third parties are unable to use, market, advertise or associate their business activities with your trade mark, otherwise you may claim intellectual property infringement.

Despite the above, what happens in circumstances when a competitor uses, markets or advertises your business name which is not a registered trade mark? The common law tort of “passing off” protects you from wrongful misrepresentation and prevents other businesses from claiming that your brand is in any way related to theirs.

This requires you to satisfy the following elements:

1. the brand is established and associated by consumers with your product offering;
2. the competitor is misrepresenting their goods and/or services as yours (whether it is implied or express); an
3. actual damage or the likely outcome of damage (such as loss of income) results.

If you would like to register a trademark, or you’re currently in a face-off with an impostor and wish to dispute the wrongful ownership of a trademark or “passing-off” of your brand, contact the Intellectual Property team at Antunes Lawyers to explore your options.