As a general rule, trade mark law protects brands, including brand names, slogans and logos.

A trade mark becomes valuable through use, marketing and exercise of the trade mark. If used properly, a trade mark is a shorthand way of delivering a message about the business and its product or service. Trade marks stimulate competition by allowing consumers to distinguish between competing products and services, and make choices about them.

The Trade Marks Act 1995 (Cth) is the law in Australia that governs the protection and enforcement of trade marks. It is a federal law.

Pursuant to the Trade Marks Act 1995 (Cth), a trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

To obtain trade mark protection, a trade mark application must be filed, examined and accepted by the Trade Marks Office, and issued as a trade mark registration. Only owners of federally registered trade marks can bring an action for trade mark infringement in Australia.

A registered trade mark is intangible personal property. It can be sold, assigned, licensed and the subject of a security interest.

A business name registration or a company name registration does not give the registrant any registered trade mark or other intellectual property rights.

The common law of passing off, not trade mark law, assists those who do not have trade mark registrations for their brands.

See What is a Trade Mark?

Registered trade marks are recorded on the Australian Trade Marks Register.

For each trade mark, the trade mark is registered in relation to particular goods and services. The registration is limited to the goods and services set out in the description of goods and services section of the registration. Protection only extends to those goods or services, or to closely related goods and services.

To obtain a registered trade mark, the trade mark owner must file a trade mark application. The application is examined, and if accepted, published for opposition.

Members of the public then have the opportunity for 2 months to oppose the registration of that application. If not opposed, the trade mark will be registered.

The registration is for a period of 10 years. At the end of the 10-year period, the registration can be extended. In fact, a trade mark registration can be extended indefinitely. There are some very old trade mark registrations on the Australian register. This is unlike patents, which expire after 20 years and cannot be renewed.

See Trade mark registration process.

Once the Registrar has examined and accepted an application for registration of a trade mark, the Registrar must publish the acceptance in the Official Journal of Trade Marks. For a period of 2 months after publication of the acceptance, a person may oppose the registration by filing a notice of opposition in the prescribed form: s 52(1).

The Registrar must give the applicant for the trade mark and the opponent to the registration of the trade mark an opportunity to be heard (s 54) after which the Registrar must decide to register the trade mark, or register the trade mark with conditions or limitations in respect of goods and/or services then specified on the application: s 55.

See Opposition to registration.

A registered trade mark, or a trade mark whose registration is being sought, may be assigned or transmitted: ss 6 and 106(1). The assignment or transmission may be partial, ie, it may apply only to some of the goods and/or services claimed, but it may not be partial in relation to the use of a trade mark in a particular area: s 106(2). The assignment or transmission may be with or without the goodwill of the business concerned in the relevant goods and/or services: s 106(3).

On the application of an aggrieved person, a prescribed court may order that the Register be rectified by entering in the Register particulars that were wrongly omitted from it or correcting any error in an entry in the Register: s 85.

See Assignment, amendment, cancellation and removal from the register.

A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

A person can infringe a trade mark registration even if unaware of the registration or the trade mark protected by the registration. There is no knowledge or intent or copying element in relation to trade mark infringement.

Thus, before launching a new brand, care should be taken not to infringe another’s trade mark. A search of the register should be conducted and a clearance opinion obtained before launch.

See Infringement.

Each country has different trade mark laws.

A trade mark registration in Australia gives no rights outside of Australia. As a general rule, if you want trade mark protection in other countries, you must file an application in or that covers each of those countries.

Australia is a party to a number of treaties relating to trade mark protection, including the Paris Convention and the Madrid Protocol. These treaties make it easier for Australian trade mark owners to obtain trade mark protection in many other countries.

See International issues.