A trade mark is a sign or ‘brand’ used in trade by a business to identify and distinguish its goods or services from those of another business. Trade marks reflect the marketing component of a business. Often a brand is the most valuable asset on a business’s balance sheet. Consequently many business owners will go to a great deal of trouble to protect their branding elements as registered trade marks.

Well-managed brands may continue for long periods and even potentially indefinitely. They often:

• are reinvented and reinvigorated;
• are extended to new commercial applications;
• rely on their heritage;
• have very high commercial value; and
• are well protected.

The Trade Marks Act 1995 (Cth) governs the registration of trade marks. IP Australia is the Australian government agency that administers intellectual property rights and legislation relating to:

• patents;
• trade marks;
• designs; and
• plant breeder's rights.

A trade mark may consist of any aspect of your business marketing such as a word or a label or even a colour or a sound. It may be a distinctive combination of a number of such elements. The main requirement for registration is that the trade mark should be capable of distinguishing your goods or services. The concept of distinctiveness is an essential part of trade mark law and the registration procedure.

Marks which are directly descriptive of the goods and services or which comprise common words or commonly used images may be difficulty to register. However registration may be obtained if it can be shown that the trade mark has been used to such an extent that it does specifically distinguish the goods or services of the applicant.

You do not have to register a trade mark to have protection. The common law right of passing off and consumer protection legislation may provide some protection against inappropriate use of an unregistered trade mark. However you do dramatically improve your position by registering a trade mark. 

There are other very good business reasons for registering a trade mark. Trade marks can be critical business assets and registration for example enables you to assign, license or otherwise commercialise your brand.

Trade marks rights are territorial in nature. If a foreign trade mark is neither registered nor used in Australia your use of the trade mark in Australia may not constitute infringement. However if a foreign trade mark is well known in Australia the law of passing off or consumer protection legislation may apply.

The territorial nature of trade mark rights is now more complex given the use of trade marks in the global marketplace of the internet. Although websites are generally accessible anywhere the critical question is typically where you promote and actually offer your goods and services.

This Legal Guide on Trade Marks Law provides small to medium business owners with information about trade marks. Before making important decisions it is advisable to obtain legal advice specific to your situation. LegalEagle’s™ free directory profiles all lawyers in Australia. You can use it to Find a Lawyer near you.

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Warning: Information provided through LegalEagle™ is for general guidance. It is not legal advice. Laws and procedures referred to may change and differ between states, territories and nationally. There may also be important exceptions or qualifications. Only a lawyer providing formal legal advice can assess your particular circumstances to determine how the law will apply.