Trademarks are a staple of the commercial world.  Some of the most well-known and well-loved icons of commerce are trademarks.  They present attributes of businesses and their products, and convey messages of quality and reputation.  And with the title of trademark come certain legal protections.  But to enjoy the protections of trademarking laws, trademarks cannot simply be declared by a business.  Trademarks must be registered under a legal process.  To qualify for registration, trademarks must possess a number of characteristics, too.  Most notably, they must represent a product or service.


Trademarks are not the same as business names.  Certainly, both can be registered, and both represent your business in unique and important ways.  But registering your business name does not endow your business with the right to use its name as a trademark.  That is because there is one key difference between trademarks and business names.  Trademarks identify a product or service.  Business names identify the business providing those products or services.  That means that a trademark could be anything from a letter, word, or name, to a colour, sound, or scent.  To make things even more complicated, business names can be registered as trademarks.  But to do so, the business name must also represent a product or service.


Avoiding infringement and protecting against it: the trademark balance


Trademarking carries a distinct legal framework.  A trademark is not the same as patents or copyrights, but trademarks remain a type of intellectual property, with comparable protections.  They can be assigned, licensed, and distributed through franchising arrangements.  For that reason, strong trademarks add value to businesses in a similar way to products and equipment.  The principal purpose of trademarking is to protect your business’s rights to a certain mark that represents its products.  Trademarking is a tool that your business can use to prevent other businesses from exploiting the positive associations that you have fostered between your products or services, and the marks that represent them.

But what many business owners don’t know is that the characteristics of a trademark are quite broad.  For example, it’s widely known that product and service names are commonly registered as trademarks.  It is less known, though, that other characteristics such as shape, and even colour are capable of trademark registration.  To understand how a business could gain legal exclusivity over such seemingly abstract things, it is important to understand the purpose of trademark registration, as well as its effect.  So, let’s take a look at the process of trademarking, and how it can protect the distinguishing products and services of your business.


Registering a trademark is a reliable way to protect it from infringement


Trademarks are governed by the Trade Marks Act and the Trade Marks Regulations.  The Regulations outline the requirements for trademark registration, including the period in which registration may occur, and the information required.  However, the process has been streamlined into an online process administered by IP Australia.  IP Australia is a government body that is responsible for the administration of trademarks registration in Australia.  By registering your trademark through IP Australia, you can enjoy a number of enforcement rights relating to infringements against your trademark.  Essentially, that means you can take action against businesses that use your trademark without your permission.  However, IP Australia is not in charge of enforcing your rights – that process is your responsibility, once your trademark is registered.


Here are your options if your registered trademark is infringed


If you have registered your trademark, you will have several options available to you if it is infringed.  If another party uses your trademark without permission, you can obtain an injunction against them to prevent further use of your trademark.  You also have the option of damages, or an account of profits under the Trade Mark Act.  However, those options require court intervention.  And litigating disputes can be costly, time consuming, and unpredictable.  For that reason, litigation should be a last resort.  So, let’s consider some alternatives.  The first is one of the cheapest options: a letter of demand.  Broadly speaking, letters of demand identify you, your trademark, and your rights.  In many cases, trademark infringements are unintentional.  That’s why letters of demand are often effective: they alert the other party to its wrongdoing, and give it the opportunity to rectify the situation.  However, you should consult a lawyer before you send a letter of demand, or take any action to enforce your trademark rights.  That will place you in a strong position to proceed, should your letter of demand be ineffective.


Navigate the trademarks process with the help of an experienced business lawyer


Getting the help of an experienced commercial lawyers is important in the trademarks process.  An experienced lawyer will help you first register your trademark, and then take the necessary steps to enforce it, should any infringements occur.  Trademark registration simplifies the process of enforcement, so that it’s easier to avoid litigation.  When your trademark is registered, your rights are clearer and therefore easier to enforce.  Non-registered trademarks do have some protections available under common law, in relation to the tort of passing off.  However, pursuing an action at common law is far more complex.  As a result, it is more likely to involve litigation, which means higher costs, and less predictability.

However, even though registered trademarks enjoy a high degree of legal protection, disputes can still arise.  In fact, they may arise in the registration process itself.  To register your trademark, you must be sure that it does not infringe any other party’s existing trademark right.  If another party considers that your trademark is similar to its own, it may file a notice of intention to oppose.  That will commence a complex, and sometimes costly process of opposition, which your business must defend to proceed with the registration.  That’s why the advice of an experienced lawyer is important from the outset.  Lawyers experienced with the trademarks process will be able to assist you in searching for similar trademarks, to ensure that yours does not infringe any others.  They will also be able to assist you in overcoming any obstacles that may arise in respect of your application.



The information provided by Kafrouni Lawyers is intended to provide general information and is not legal advice or a substitute for it. Business people should always consult their own legal advisors to discuss their particular circumstances. Kafrouni Lawyers makes no warranties or representations regarding the information and exclude any liability which may arise as a result of the use of this information. This information is the copyright of Kafrouni Lawyers.

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