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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.

By Jennifer Song / Senior Associate

A trade mark is a “sign” that is used to distinguish your goods or services from the goods or services of others.

A “sign” can be a letter, word, logo, slogan, shape, scent, sound or a colour – or any combination of these.

Some famous trade marks include:

• the Nike tick (logo trade mark);
• the colour purple for Cadbury (colour trade mark);
• the Coca-Cola bottle shape (shape trade mark);
• the “Oh what a feeling, Toyota” music/jingle without words (sound mark); and
• the concocted word “Google”.

A trade mark application can be lodged with the Australian Trade Marks Office. If the trade mark application proceeds through to registration, the owner will have an exclusive right to use the trade mark for a specific list of goods and/or services throughout Australia.

By Jennifer Song / Senior Associate

The Madrid Protocol System allows you to file trade mark applications in a number of jurisdictions through one Madrid Application. In most instances, it will be cheaper to file in numerous countries/jurisdictions via the Madrid Protocol System as opposed to filing separate national trade mark applications.

The World Intellectual Property Office (WIPO) administers the Madrid System. The details of all pending/registered Madrid Applications (and registrations, called “International Registrations”) can be accessed via its online portal called the Madrid Monitor: https://www3.wipo.int/madrid/monitor/en/

The Madrid Application must be based on a national trade mark that has already been filed or registered (typically an Australian trade mark for Australian applicants). A Madrid Application is then filed via WIPO designating the various jurisdictions that are party to the Madrid Protocol.

The list of 130 jurisdictions/countries that are party to the Madrid Protocol can be viewed at: https://www.wipo.int/export/sites/www/treaties/en/docs/pdf/madrid_marks.pdf

Notably, some groups of countries can be claimed as one designation. These include the European Union (which covers all members states of the EU including the Benelux countries), the OAPI (African Intellectual Property Organisation (which covers Benin, Burkina Faso, Cameroon, Central African Republic, Chad, Comoros, Republic of the Congo, Côte d’Ivoire, Gabon, Guinea, Equatorial Guinea, Mali, Mauritania, Niger, Guinea Bissau, Senegal and Togo).

Though one Madrid Application can designate up to 130 juridictions, each jurisdiction will examine the particulars of the trade mark application. If there are issues raised via an examination report (or “Office Action”) during examination, a trade mark attorney/lawyer will need to be engaged in that jurisdiction/country and will need to respond to the examination report. 

Once registered, the International Registration requires renewal every 10 years and can be done via the WIPO online portal. All designations can be renewed with the click of a button!

However be warned – in many instances and in certain jurisdictions like China, lodging a direct national trade mark can be a much better choice than lodging via the Madrid Protocol.

If you have any questions, please do not hesitate to contact us.

By Jennifer Song / Senior Associate

In Australia, an application for the registration of a trade mark must be rejected if the trade mark “contains or consists of scandalous matter”. The test as to whether a trade mark is “scandalous matter” can be summarised as: “Will it shock the ordinary customer for the relevant goods/services?”

Thus, what is “scandalous matter” is a matter of opinion and can change over time. In the past, trade marks containing offensive racial terms were registered but would not be registrable today. On the other hand, religious terms such as “Jesus” and “Hallelujah” have been rejected in the past but have now been permitted.

It appears that in Australia, the threshold for what is shocking and thus “scandalous matter” is quite high and many words/terms may be considered as being bad taste, but not “scandalous matter” and thus, registrable.

Several trade marks that contain words phonetically similar to “FUCK” have been registered:

• “HEDFUK”;
• “FARKEN ORSUM”;
• “FARKOFF”;
• “UNFKNBLVBLE!”;
• “FAR KEW”.

However, the misspelt “CNUT” has been registered although numerous applications for “KUNT” have been refused over the years. The word “ASSHOLE” has been registered.
In 2003, the Australian Trade Marks Office found that the phrase “LOOK GOOD FEEL GOOD = ROOT GOOD” in respect of cosmetics and sexual hygiene products was registrable as the phrase was considered not likely to cause a significant degree of shock, despite being crude in sentiment.
In 2011, the Australian Trade Marks Office found that the mark “POMMIEBASHER” was not “scandalous matter”. The Delegate concluded that the mark was “part of ordinary and acceptable, if colourful and colloquial, language”.

Do you have a scandalous trade mark you wish to use and register as a trade mark in Australia? Now may be a better time than ever to lodge the scandalous trade mark with the Australian Trade Marks Office. 

After 20 years Wallington Dummer is moving from 37 Bligh Street across the road to 66 Hunter Street in Sydney city.

It is all in the name of progress: the 37 Bligh Street building is being sacrificed for a Sydney Metro project.

Fortuitously our suite  number will remain the same and we will still be on level 10 in our new building – the City Mutual Building.

We expect to be operating from our new digs in December 2022. Visitors always welcome.

By Jennifer Song / Senior Associate

Unlike some other jurisdictions like the United States, in Australia, there are no use requirements in order to maintain a trade mark registration. 

However, once three years has passed from the date of filing, it is possible for any third party to request that a trade mark is removed from the Australian Trade Marks Register for non-use.

In Australia, it is also possible for any third party to request that a trade mark is partially removed for non-use. This happens when a third party wishes to remove some (and not all) of the goods/services for which a trade mark is registered. 

Accordingly, if you wish to keep your trade mark on the Register for all of the goods/services for which it is registered, you must ensure that the registered trade mark is continuously being used for all of the goods/services for which it is registered. 

The Australian trade marks system is different from some other jurisdictions like the United States which has a maintenance requirement – namely, between 5 and 6 years after registration, the owner of a US  trade mark must declare that the US  trade mark is being used in respect of all of the goods/services for which it is registered in the US. Evidence of this use must also be provided to the US Trade Marks Office. Therefore, any goods/services that are not being used under/by reference to the trade mark registered in the US must be deleted.

By Jennifer Song / Senior Associate

It is important to file a trade mark in the name of the correct entity. A legal entity in Australia is typically a person or a company. The applicant of the trade mark must be the entity that intends to use (or is already using) the trade mark.

So if you are a sole trader, then the trade mark will be filed in your personal name. However if there is a company, then make sure you file the trade mark in the name of the company. 

If you are unsure who the applicant should be, look at the receipts of your business  – If the receipts are issued in the name of the company (and/or ACN), then the trade mark ought to be filed in the company’s name. On the other hand, if the receipts state the business name (and/or ABN) or your personal name, then the trade mark ought to be filed in your personal name. Never file the trade mark in your personal name if it is your company that is using the trade mark – even if you are a director of the company.

Be warned that if a trade mark filed in the incorrect entity’s name, then this is not possible to fix this error at any later stage. A new trade mark will need to be filed in the name of the correct entity. This is because a trade mark can be struck off the Australian Trade Marks Register if a third party can show that the applicant/owner of a trade mark had no intention to use the trade mark at the time of filing. 

What is it?

A Headstart Application is a pre-application service for trade marks in Australia. You lodge the trade mark and the Australian Trade Marks Office (Office) examines the trade mark and provides a Results Report within 5 days of lodgement (Results Report). The Results Report outlines any issues and barriers to registration of your trade mark (eg. similar trade marks already on the Australian Trade Marks Register, whether the Office considers your mark to be too descriptive etc.). Then, you will have 5 business days to decide as to whether you want to convert the Headstart Application into a standard application (or abandon the same). If you wish to convert the Headstart Application into a standard application then the trade mark proceeds through the standard trade mark process.

The Pros

1. A standard trade mark application takes 3-4 months to be examined whereas a Headstart Application is examined within 5 business days. This is great if you are about to spend a lot of money on a marketing campaign using the trade mark and you want to know whether your trade mark is going to have issues obtaining registration.

If the Results Report raises issues/barriers, then you can consider changing your trade mark and/or curing any defects in your trade mark before spending a whole lot of money committing to it. This may save you from going through a costly re-brand and potentially infringing similar trade marks already on the Australian Trade Marks Register.

2. When you lodge a Headstart Application, the details of the same remain confidential and are not published for the public to view until and if you decide to proceed with converting the Headstart Application to a standard application.

The Cons

1. The goods/services you are able to claim in a Headstart Application are limited. So if you want a trade mark for a very specific good/service, a standard application may be a better option.

2. You do not obtain a filing date when you lodge a Headstart Application. You get one the moment you convert the Headstart Application to a standard application. So although rare, there is a risk that you may receive clear Results Report, then before you convert it to a standard application, a third party lodges a trade mark that is similar to yours and during formal examination of the standard application, the third party’s trade mark is raised as a barrier against your standard application.

3. The Results Report is not gospel. If you convert your Headstart Application to a standard application, the standard application will be formally examined and the Examiner is not bound by the results in the Results Report.

4. You have 5 business days to decide whether you want to convert the Headstart Application into a standard application and this deadline is not extendable.

Further details can be found below:

Headstart Application Process

The rights conferred on an owner of a registered trade mark are more comprehensive than and are in addition to the rights conferred on an owner of an unregistered trade mark.

A registered trade mark will give an owner significant commercial and practical benefits that may not be available to an owner of an unregistered trade mark. Further, registered rights are almost always more easily enforceable against third parties who may be using a trade mark that is deceptively similar to a registered trade mark.

Companies such as Google and Facebook have specifically designed and implemented formal processes enabling an owner of a trade mark to report claims of trade mark infringement.  An owner of a registered trade mark will find it easier to use processes such as these to enforce their rights in a registered trade mark, as opposed to a business owner who relies on rights in an unregistered trade mark.

Another practical benefit of owning a registered trade mark in Australia is that an owner of a registered trade mark is able to formally notify the Australian Customs and Border Protection Service (Australian Customs) of its registered mark. Australian Customs is then able, and will seize any counterfeit goods on behalf of the owner of the registered trade mark before these counterfeit goods are brought into Australia. This service is provided by Australian Customs to owners of registered trade marks at no cost. However, this service is not available to an owner of an unregistered trade mark.