Registering a trade mark in Australia is not mandatory, but it offers numerous benefits that are valuable to businesses.
The process of trade mark registration starts with a search to determine if there are any prior trade marks that may be infringed upon. This search will also reveal if any pre-existing trade marks or applications may prevent the proposed trade mark from being registered. After the search, businesses can assess the likelihood of the proposed trade mark being successfully registered and the potential for any third-party infringement claims.
Once registered, a trade mark gives the owner the exclusive right to use and control the use of the trade mark. It also gives the owner the ability to restrict others from using a similar trade mark, in connection with the same or closely related goods or services. The trade mark owner has a statutory right to sue for infringement, which is the most efficient and cost-effective way to enforce rights. Also, a registered trade mark is likely to prevent similar or identical trade marks from being registered for the same or similar goods or services.
The trade mark owner may also provide the Australian Customs Office with a notice objecting to the importation of goods that infringe upon the trade mark. Registered trade marks can be licensed or sold to third parties and serve as a deterrent against potential infringers. Finally, a registered trade mark in Australia may serve as the basis to obtain trade mark protection in other countries.
So, while trade mark registration is not mandatory, it provides several benefits that are valuable to businesses, including the exclusive right to use, and control the use of, the trade mark and the ability to enforce trade mark rights.
What are the Risks of Not Registering a Trade Mark?
It’s not compulsory to register a trade mark in Australia. A person or business that uses a trade mark, in connection with their goods or services, acquires common law rights in that trade mark.
In Australia, the owner of an unregistered trade mark may only rely upon the common law action of passing off, or provisions of the Australian Consumer Law, to protect a trade mark against imitation, or unauthorised use by others. However, a passing off requires the trade mark owner to prove reputation and goodwill, which may present challenges where the business, or use of the trade mark, has not been established for a substantial period of time.
A registered trade mark, on the other hand, grants the owner of the trade mark a statutory monopoly. If someone else uses the same or a similar mark, in connection with the same or similar goods or services, then the registered trade mark owner may rely upon their trade mark registration to enforce their trade mark rights.
Enforcing a registered trade mark against unauthorised use is usually far more effective and economical than relying upon the common law, or the Australian Consumer Law, to do so. Chat to us today about the benefits of trade mark registration. Send us an email from the form on this page or book a free trade mark consult.
