What makes a good trade mark?
‘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.’
(Ref: s17 Trade Marks Act 1995)
Elements of a good trade mark
- It has recognisable association with brand (e.g. Coca Cola);
- Distinctive of goods or service but isn’t descriptive (e.g. WHO IS AUSTRALIA’S CHEAPEST CHEMIST not a TM);
- Used in the course of trade (3yrs non-use = s92 removal);
Common hurdles to registration
Can’t register TMs considered to be:
- Commonly used phrases or descriptive terms (e.g. IP Aust determined that CREATION WITHOUT COMPROMISE did not distinguish the goods from others of its kind and should be available for other traders to use);
- Geographical names and surnames (e.g. Sydney);
- Prohibited signs.
Why register your trade mark in Australia
- Ten year protection – registration establishes your legal rights to take action against another party pursuant to the Trade Marks Act;
- Increase brand awareness;
- Helps prevent people using TMs without permission and encourages proper licensing of intellectual property (profitable);
- Adds value to your business if you have strong IP rights;
- If you decide not to register your trade marks, you will need to rely on protection through alternative legal action, such as passing off under common law (Competition and Consumer Act 2010).
Defending your trade mark
To help prove your ownership of intellectual property and assist with preparation of submissions in support of TMs, its useful to keep a record of:
- What kind of rights you have, and in what form the right was created e.g. Owner or licensee;
- When a trade mark was created;
- Who created the trade mark;
- Evidence of ownership – such as an application for trade mark or design;
- What, if any, material from a third party was used in the creation process, and whether permission for such use was obtained;
- Log books showing how the creation process was undertaken (particularly important for IP created by employees);
- Files of early drafts and prototypes that embody the intellectual property;
- Copies of agreements with those or on whose behalf you are distributing goods or services. These should include agreements giving distributors the right to use trade marks and marketing material. This evidence should be stored in an IP Register with a back-up copy in a separate location.
If you would like to know more or need any assistance, feel free to contact us at Antcliffe Scott, we’d be more than happy to help!
Domino’s alleged Franchising Code breach
In 2015, the Franchising Code of Conduct was updated to introduce court-imposed civil penalties for non-compliance with the Code, including those provisions requiring franchisors to provide franchisees with copies of marketing fund statements and reports.
Domino’s Pizza Enterprises Ltd (Domino’s) is the first company to pay court-imposed penalties.
The ACCC issued two infringement notices because it believed that Domino’s had failed to comply with the requirement in the Franchising Code of Conduct to provide franchisees with both an annual marketing fund financial statement and an auditor’s report within timeframes specified under the Code. Domino’s has now paid penalties totalling $18,000.
It is worth noting that the ACCC can issue an infringement notice where it has reasonable grounds to believe a contravention of the Franchising Code of Conduct has occurred. The payment of a penalty specified in an infringement notice is not an admission of a contravention of the Code.