20 MARCH 2013
It is a common misconception that registration of a business/company name or use of a particular logo confers an exclusive right to use that name or logo. This is not necessarily the case, unless the owner can prove they have acquired a sufficient reputation for using that name or logo for certain goods/services in a particular market. This is why businesses should consider seeking further protection of their names and logos by registering them as trade marks.
Some businesses do not register their names or logos as a trade mark because they instead rely on the general protection provided by consumer protection legislation and common law action in passing off. The advantages of going one step further to register a trade mark include:
(a) enforcement advantages, as it can generally be a time consuming and expensive exercise to bring an action for passing off or misleading and deceptive conduct against a business, particularly since reputation in a particular market (which includes different geographical areas) must be proven for unregistered trade marks;
(b) trade marks are personal property which means they can be transferred, assigned, leased or mortgaged; and
(c) trade marks are recorded on a public register. The presence of your name or logo on this register can act as a deterrent to use by other businesses investigating their branding options.
Following a change to the trade marks legislation, from 15 April 2013 the process to register trade marks has been made simpler and more efficient for businesses. Key changes include:
(i) Presumption of registrability – the changes clarify that a trade mark is presumed to be capable of registration unless the Registrar believes there is uncertainty about the trade mark’s distinctiveness. This means any doubt will generally be resolved in favour of the person applying for the trade mark;
(ii) Shorter timeframes – third party objectors will now only have two months (previously three months) to oppose a trade mark application. The timeframes for providing evidence in support of the opposition have also been constricted; and
(iii) New forum – the Federal Magistrates Court will now be able to hear and determine trade mark matters. This allows for less complex trade mark matters to be determined through a quicker and less expensive forum.
If you have not registered your business/company names or logos as trade marks, we would be pleased to discuss further protection options with you.
You are a valued Kinneally Miley contact, for more information related to this Legal Update please contact us.
[contactsbox] [leftcolumn]Contact Partner: Francesca Petroccitto
Direct Telephone : 07 3210 5771
Mobile Telephone : 0402 293 644
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