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Trade marking can be tricky - here are our top tips

Choosing the perfect name for your new business can be difficult and costly if you get it wrong. Before you choose a name consider the following trade mark tips:

1. Make sure you have exclusivity

The object of a trade mark is for it to act as a badge of origin so that when consumers see that brand, they know the goods or services originate from you. Therefore, before adopting use of a trade mark, you should conduct a clearance to use and register search to ensure that:

a. other traders are not using a deceptively similar or substantially identical mark, for your goods or services, or goods or services of the same description;

b. you won't infringe another traders trade mark if you adopt use of your desired mark for your goods and services;

c. that the trade mark is registerable.

A clearance to use and register search should not only include searches of pending and registered trade marks, but it should also include searches for traders that may be using the trade mark without the benefit of registration. 

Trade mark registration in Australia can take at least 7 months. That is a long time to invest in marketing a brand, just to discover that you cannot use the brand. 

2. Choose a mark that is registerable

Traders are often tempted to trade mark words that perfectly describe their goods and services. However, it is a principle of trade mark law that a trader should not be able to trade mark, marks which other traders would desire to use without improper motive. Thus you cannot register marks that are descriptive, no matter how much they perfectly describe your goods and services.

The other reason you should not attempt to register descriptive marks is that they do not give you an exclusivity. The purpose of a trade mark is to indicate the goods and services originate from you. When you adopt a descriptive mark, it can never be synonymous to you.

The final reason why you should not attempt to register descriptive marks, is because you cannot enforce them. It is a full defence to trade mark infringement to use a trade mark in a descriptive manner. Thus, if you adopt a descriptive trade mark, you cannot enforce it against others as they would have the defence of descriptive use.

There are other types of marks that are not registerable. For example you cannot register flags as trade marks, offensive marks and nor can you register common surnames.

3. Get Registered

This tip is fairly self-explanatory. Even though use of a mark in Australia gives you some common law rights (such as the right to stop people using your mark in a misleading or deceptive manner) a trade mark registration is the best form of protection. Trade mark infringement cases are less expensive to run and the outcome can be more certain.

In addition, trade mark registrations act as a sword and a shield. That means that you can enforce your trade mark against others, but your trade mark registration can also provide you with a defence. It is a full defence to an allegation of trade mark infringement, to use your trade mark as registered. Thus, you can defend yourself by using your trade mark registration.

4. Use your mark and use it consistently

Trade marks are a use it or lose it regime. This means that trade marks can be removed from the trade marks register if they are not used.

In addition, when you file your trade mark, you have to have an intention of using the mark on all of the goods and services of the application. If you do not have that intention, the mark can be removed, or partially removed.

Use your mark consistently. If you do not use your mark consistently, it may be that your original mark becomes vulnerable to removal for non-use on the basis that the changes have made to the mark are so significant that they alter the identity of the mark.

5. Don’t use your trade mark in a descriptive manner

Traders often want to emulate the success of famous marks. They want their mark to become so successful that when people hear or see that mark, they think of the product or service that is being offered, not the trader offering those services. That is, they want their mark to become so famous it is descriptive. However, when a mark becomes descriptive of goods and services it can be removed from the trade mark register because it is descriptive and cannot function to distinguish one trader from another.

For that reason you should never use your trade mark in a descriptive manner or use it as a noun or a verb. For example:

  1. you should ask for a Kleenex tissue, not a Kleenex;
  2. you should conduct a Google search, rather than Googling it.

6. Grow your Brand as your Business Grows

Some of the saddest cases of infringement that we see, occurs where two companies have happily co-existed for years, but have then expanded into each other’s marketplaces. The two companies may never have been competitors, but suddenly they are now in the same marketplace and operating under similar brands. In that case they are victims of their own successes.

When your business expands, remember to file fresh trade mark applications to protect yourself for your new goods and services. Recall that a trade mark registration acts as a shield as well as a sword, so obtaining a registration will give you protection if you expand into another traders marketplace.


Do you have questions about registering your trade mark? Ask our trade mark lawyers.

Trade Mark Lawyers

EAGLEGATE Lawyers - Branding Experts.

EAGLEGATE is a leading, multi-award-winning, Australian firm offering trade mark legal services.

With over fifteen years experience in naming and branding, our team has represented some of Australia's biggest brands and helped them protect and enforce their trade mark rights.

Get in touch with us if you have any questions about branding or trade marking or if you want to know more about protecting your brand and goodwill.