3.4 What is a trade mark?
A trade mark distinguishes its owner’s goods and services from those of another business. It can be a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these, e.g. the flying red kangaroo on the tail of Qantas aircraft.
The owner of a registered trade mark has exclusive legal rights to use, license and sell the mark. Only registered trade marks can carry the ® symbol that alerts others to respect them as IP.
Trade mark applications must be made in each desired jurisdiction and are separately examined for validity. The goods and services applicable to the trade mark application must be categorised into one or more classes from a picklist.
When registered, trade marks are recorded in public databases, so searches can determine the uniqueness of proposed trade marks.
In Australia, trade mark registration lasts 10 years and can be renewed. However, a trade mark’s registration may be removed if it is not in active trade use. This deters people from registering multiple trade marks simply to prevent others using them.
Unregistered trade marks
These can be useful marketing tools provided others have not registered them. They may carry the symbol ‘TM’ but this does not imply any specific legal IP rights. However, unregistered trade marks may have common law rights under unfair trading legislation in Australia, particularly if they have been used unchallenged for several years.
This is the practice of misrepresenting products or services as being those of another business, e.g. by using a similar packaging colour or logo. In Australia, common law prevents passing off to enforce unregistered trade mark rights, protecting the intangible asset of customer goodwill.
Names that are not trade marks
Business names and company names must be registered to run a business; they are not IP. Unlike trade marks, multiple businesses can use the same name, although this may be ruled out as confusing to customers if the businesses operate in the same region and category of trade.
Domain names only secure the web URL of a business and are not IP.