Trademarks

Why Register? – Registered vs Unregistered

Trademarks are either registered or unregistered. Unregistered trademarks (common law) are limited in their breadth, for example, to their geographical reach, thus restricting their coverage. By registering a trademark in Australia, the geographical breadth is Australia wide.

A trademark can be registered with an intent to use the mark or if it has been in use, provided it meets threshold tests of distinguishability. After acceptance, and during the opposition period, its registration may be opposed if another trader that has continuously used the mark in commerce before the filing date of the registration application.

Enforcing an unregistered trademark requires substantial discovery, including whether there is confusion in the marketplace which is indicative of infringement. On the other hand, when another trader’s goods/services are the same as a registered trademark, there is a presumption of infringement.

What are Classifications?

Trademarks are classified according to the goods and/or services with which they are used. An international standard has been established to define goods and services, the ‘Nice Classification’ system. Because classes of goods and services are distinct from one another, a trademark utilised in conjunction, for example, with trucks will not be confused with that same trademark used in conjunction with baby clothing, unless a mark is ‘well known in Australia’.

Trucks are in class 12 and baby clothes are in class 25. It is presumed that there is little or no likelihood of confusion because of the types of consumers and the purchasing outlets are vastly different. Trucks are purchased by sophisticated buyers, requiring certain specifications and in truck lots. Baby clothing is purchased by the general public, typically in clothing stores. Hence, the same trademark used with trucks and baby clothes does not present a likelihood of confusion.

An experienced practitioner can develop the goods and services to establish broad coverage.

What is a Distinguishing Trademark?

The best trademarks (highly distinguished) are non-descriptive of their goods or services. For example:

• Adobe for graphics software
• Amazon for a marketplace
• Shell for petrol
• Apple for computers and music/videos

Descriptive trademarks can be registered upon substantial use in the marketplace.

What can be Trade Marked?

Any letter, word, name, signature, numeral, device, brand, heading, aspect of packaging, shape colour, sound or scent. Additional possibilities for registration include moving images, holograms, gestures, textures and tastes.

Why Search Before Adopting a Trademark?

Before using a trademark in conjunction with goods and services, it is a best practice to search the trademark register on the IPA website for similar or the same marks. In this way, valuable marketing resources are not wasted on a trademark that is unavailable when similar or the same trademarks are already owned by another entity.

If an entity is considering going global, a search of the trademark in the relevant classes on the USPTO website and the EUIPO website may bring up the same or similar marks being used overseas.

In key word searching, use different spellings and words that sound like the trademark in question.

To search for unregistered marks, a quick Internet search using the same searching techniques may reveal use of unregistered marks. Another common law use of a trademark can be a bar to registration of a trademark.

An experienced practitioner can organise a search and render an opinion.

Going Global? International Trademark Registrations

Oftentimes, businesses expand into international markets. In the process, a trademark clearance search in the trademark registers of the target markets is recommended by an experienced practitioner.

A convenient way to file internationally is by using the Madrid Protocol system. However, it is best to prepare the goods and services listed so that they are accepted in the international jurisdiction’s Trademark Office. For example, the United States Patent and Trademark Office (USPTO) has strict rules about goods and services designations. An experienced practitioner can prepare the goods and services to avoid issues in the USPTO.

When can we use ®?

The symbol ® is used for registered trademarks. In the meantime, it is highly recommended that for every unregistered mark, a ^TM is placed next to the mark. This puts the world on notice that the entity considers the mark a trademark.

What are Crossovers to other forms of IP?

Passing Off is a widely use legal remedy. Damage to a trader’s reputation or goodwill can be caused by passing off. A products or service’s ‘get-up’ (trade dress), including a brand name or business name may be misappropriated to cause damage by confusion or deception. Domain names of active websites are often the subject of passing off claims. Keyword advertising and Search Engine Optimisation may be problematic when listing competitors’ trademarks and also may be subject to passing off claims.

Design registrations are also useful in branding. A design registration is granted for a distinguishing aesthetic feature (the way it looks – not its functionality) of a product. In this way, design registrations are branding tools. As an example, Apple received design registrations on the curvature of the corners of its mobile devices. Litigation with Samsung ensued over five design registrations. Apple defeated Samsung. In Australia, a design registration may impede a copyright infringement claim.

Copyrights are also useful in branding. A copyright may exist in images, copy, recorded sounds, product design drawings, moulds, and works of artistic craftmanship, to name a few. A copyright attaches to an expression in a fixed medium but does not protect an idea. (Designs and Patents can safeguard ideas as they do not require a ‘reduction to practice ‘(no need for a working model) and trade secrets may also safeguard ideas). There is no registration requirement for copyrights.