Jennifer Song / Senior Associate
Clients often come to us with one or more of the following misconceptions about trade marks:
1. the Registration of a company or business name will give me trade mark rights – Incorrect
The registration of a company or business name with ASIC will not give you exclusive rights to use that company or business name. However, the registration of a trade mark can give you exclusive rights to use that company or business name within your field of interest.
2. Registration of a domain name (eg. www.xyz.com) will give me trade mark rights – Incorrect
The registration of a domain name will not give you exclusive rights to use that domain name. However, the registration of a trade mark can give you exclusive rights to use that domain name within your field of interest.
3. A family trust can be the owner on record of a trade mark application/registration – Incorrect
The owner of a trade mark must be a “legal personality”. A trust is not a “legal personality” so cannot own a trade mark. However, the owner can be the trustee of a trust (ie. Individual or company).
4. Common, generic, descriptive words/phrases can be easily registered as trade marks – Incorrect
Given a trade mark registration gives the owner an exclusive right to use the trade mark in respect of the field of interest (ie. goods and/or services claimed in the trade mark registration), common, generic and descriptive words/phrases are not easily registrable unless the applicant/owner is able to demonstrate that the common, generic or descriptive word/phrase has been used to such a significant extent that the Australian public identify that common, generic or descriptive word/phrase as being the goods/services of the applicant/owner. An example of a common, generic, descriptive word that was registered due to its significant use in Australia is “Just Jeans”.
5. If I register a trade mark in Australia, I get trade mark rights in New Zealand – Incorrect
If you register your trade mark in Australia, your exclusive rights to use the trade mark apply in Australia only. A trade mark application needs to be lodged in NZ (and in other countries of interest). Sometimes an International trade mark application via the Madrid Protocol can be used to lodge in multiple countries at the same time.
6. If I use the “TM” symbol next to my trade mark, I own the trade mark – Incorrect
Anyone can use the “TM” symbol to indicate to others that it is using the sign as a trade mark (and not in a descriptive sense). You do not need to have a trade mark application or registration in order to use the ™ However, use of the “TM” does not mean that the trade mark is registered or that the entity using the “TM” symbol has exclusive rights to use that trade mark.
7. I can use the ®symbol next to my unregistered trade mark – Incorrect
The ® symbol can only be used next to trade marks that are registered. A fine can be imposed by the ACCC for improper use.