Understanding Trademark Laws in Australia 2021
Cadbury fought a long legal battle in Australia and the United Kingdom before registering its distinctive purple as a color trademark for chocolate. In Australia, a person who owns a trademark may be able to prevent others from using the same or a similar trademark. The person’s ability to prevent the use of that trademark in other countries will be determined by the laws of those countries, as well as the person’s use or registration, or both, of the trademark in those countries.
What exactly is a trademark?
A trademark is a symbol used in business to indicate that goods or services are supplied by a specific trader or service provider. A trademark can be a phrase, word, letter, name, signature, numeric device, logo, color, symbol, picture, packaging or shape aspect, or even a scent or sound. It can be made up of just words or images, or any combination of the above signs.
Trademarks are classified into two types-
Registered trademark- Registered trademarks commonly denoted by ® are trademarks that have been registered in Australia under the Trade Marks Act 1995 (Trade Marks Act). A TM symbol may be used to designate a trademark that is still in the application process and has not yet been registered. The owner of a registered trademark has an exclusive monopoly right to use and license the mark for the goods and services for which it is registered.
common law trademark- A common law trademark is an unregistered trademark that has been used with certain goods or services such as a brand name or in advertising to such an extent that it is recognized as distinguishing the goods and services of the business using that mark from those of other businesses. Even if it is not registered, the law prohibits another trader from using the same or a similar trademark in certain circumstances.
Infringing on another person’s trademark (registered or unregistered) may be considered passing off or deceptive conduct. Section 18 of the Australian Consumer Law (ACL) prohibits a person from engaging in misleading conduct while engaging in any activity related to trade and commerce.
Any legally recognized entity including an individual or a company can apply to register a trademark. Trademark registration is valid for ten years from the date the application was filed. It is possible to renew it indefinitely by paying renewal fees. As a result, the life of trademark registration is potentially infinite. However, keep in mind that trademark registration under the Trade Marks Act is only valid in Australia.
Understanding the Trademark Law
Trademark law in Australia is based on common-law use-based rights as well as the Trade Marks Act 1995 (Cth), which is administered by IP Australia, an Australian government agency within the Department of Industry, Innovation, and Science. Registration offers benefits such as constructive notice and national rights.
A trademark can be extremely valuable to a brand. Trademark law safeguards trademarks against dilution and unauthorized use. A trademark enables a consumer or buyer to quickly identify the brand from which they are purchasing. Brands want to build trust with their customers, and consistent brand identity and trademarks allow them to do so more quickly and easily.
Trademarks and brands are critical for customers to be able to identify the brand and product later on. Trademark law governs the use and protection of trademarks, shielding them as well as consumers from product and trademark confusion.
Trademark law also allows companies and brands to prevent other brands from using their trademarks. The unauthorized use of a trademark is a violation of trademark law. Companies don’t want other brands using their trademarks because it betrays the consumer’s trust and potentially dilutes the perceived quality of their products.
Trademark law protects a company’s investment in its brand by preventing others from misusing its brand and trademarks.
Trademark Registration under Trademark Law
Though it is not required, it is beneficial to register a mark as a trademark to gain protection under trademark law. As previously stated, a mark that is used in commerce but is not registered as a trademark is protected under trademark law. Though this is true, registered trademarks are afforded greater protection under trademark law than unregistered trademarks.
The following are the benefits of registered trademarks under trademark law:
After five years of continuous use, the status is unquestionable.
The trademark is owned and registered on a national scale.
Possibility of filing a lawsuit in federal court for infringement.
Possibility of recovering treble damages, attorneys’ fees, and other costs.
This reduces the number of possible infringement defenses that can be used.
Trademark applications are governed by the Lanham Act, which is under Title 37, Part 2 of the Code of Federal Regulations. Once you receive trademark protection for your mark, you also receive a certain amount of international protection for your mark.
It is beneficial to conduct a trademark search when deciding on the marks that will identify your company. A trademark search ensures that the mark you want isn’t already in use somewhere else. In a trademark search, look for any marks that are similar to or identical to the one you want to use for your business.
Because trademarks are granted on a first-come, first-served basis, conducting a trademark search is critical when branding a new business. If you use a mark that infringes on someone else’s trademark, you risk incurring a costly lawsuit. If you lose a lawsuit, you lose the right to use your mark and any products bearing that mark. This can destroy a new business not only financially, but also by removing the ability to brand or advertise the business.
Loss of Trademark Rights Under Trademark Law
Trademark Rights Can Be Lost Under Trademark Law Even if you have been granted a trademark, you can lose it. A trademark can be lost in one of three ways:
Abandonment- When a trademark is abandoned, it means that the owner has stopped using it and has no plans to do so in the future. Under certain conditions, the owner’s intent to resume use can be inferred. The failure to use a mark for three years in a row is considered prima facie evidence of abandonment.
Incorrect licensing or assignment- The second way your trademark can be lost is through improper licensing or assignment. If a trademark owner licenses out the right to use his trademark without exercising quality control over how the mark is used, the trademark may be revoked.
Furthermore, if a trademark is assigned to a party without any assets being sold, the trademark privileges will be revoked.
Genericity- What was once a trademark and brand identifying mark may become generic over time. When a trademark becomes generic, it no longer qualifies as a trademark. A trademark, by definition, is a distinguishing mark that allows consumers to easily identify a specific company.
In summary, you can lose your trademark by not using and overusing it. It’s very important for trademark owners to consistently protect their trademarks.
Infringement of a Trademark Under Trademark Law
One of the most significant advantages of registering your trademark is the ability to sue for Trademark Infringement. When a party other than the trademark owner uses the mark without the trademark owner’s permission, this is referred to as trademark infringement.
If there is a “likelihood of confusion” for consumers, this standard is used to decide trademark infringement cases. If you sell a good that is marked with a trademark that you do not own or a mark that is similar to a trademark that you do not own, and buyers are likely to confuse your product with the trademark owners’ product, you are likely committing trademark infringement.
However, using the same term on a completely different product isn’t likely to confuse and therefore isn’t likely to be considered trademark infringement.
In addition to trademark infringement, some trademark owners can and do sue for Trademark Dilution. A trademark dilution claim can only be brought against marks that are considered “famous.” Only federally registered trademarks are subject to the “famous” test. Each state has its criteria for determining state-level trademark dilution. Dilution can be detected under state law by looking at the following factors:
The mark has “selling power” or a distinguishing feature.
The two marks in question are very similar.
If the conditions for dilution are met, the trademark owner may use any mark that dilutes the value of the original trademark. Dilution of a trademark occurs as a result of blurring or tarnishing. Unlike in infringement cases, proving confusion is not required in dilution cases.
Other Actions Available Under Trademark Law
The two main causes of action against trademarks under trademark law are the likelihood of confusion and dilution, but there is also a third action under state unfair competition law.
Unfair competition is defined as:
Passing it off
Reverse passing off
Australia has a well-developed legal system that protects the intellectual property of businesses and individuals. Businesses can register a trademark as a marketing tool. A registered trademark provides legal protection that prevents others from using your brand. Trademarks are issued and protected nationally.