What Are the Different Types of Registrable Trade Marks?
A trade mark is any sign you use to distinguish your business’ goods and services from others. In this sense, a sign could be your business name, logo, colour, shape and sometimes a combination of these things. If you use a trade mark in the day-to-day operation of your business, you might consider registering your trade mark with IP Australia. However, before you apply for trade mark registration, you should consider the different types of registrable trade marks. This article outlines the benefits of trade mark registration, along with the different types of trade marks you can apply for.
Benefits of Trade Mark Registration
The main benefits associated with registering your trade mark include the right to:
- take action for trade mark infringement;
- use your trade mark to the exclusion of others; and
- commercialise your trade mark.
Taking Action for Trade Mark Infringement
If someone copies or misuses your trade mark that you have not registered, you are limited in your ability to protect your intellectual property rights. On the other hand, registering a trade mark with IP Australia can give you more robust protection. This is because you have the right to take action for trade mark infringement under the Trade Marks Act.
Trade mark infringement is when a trader uses a sign that is substantially identical with, or deceptively similar to, a registered trade mark concerning the same or similar goods and services to those listed within the trade mark registration. For example, if a small tech company sold smartphones with an apple-shaped logo, they could be infringing on trade mark rights held by Apple Inc.
Ultimately, you cannot bring an action for trade mark infringement unless you have a registered trade mark.
Exclusively Using Your Trade Mark
Under the Trade Marks Act, a trade mark owner enjoys the exclusive right to use their trade mark concerning their business’ goods and services. This means that with some minor exceptions, no person or business can use your trade mark without your permission. Consequently, you can develop a distinctive brand identity that is unique from other brands in the market.
Commercialising Your Trade Mark
Owning a registered trade mark can also allow you to channel different income streams into your business. This is because a registered trade mark is a valuable asset that you can license or eventually sell.
Licensing is an agreement where you allow another person or business to use your trade mark for a period of time under certain conditions. A licensing agreement can include provisions regarding royalties or other payments.
In this sense, registering a trade mark with IP Australia can allow you to commercialise your intellectual property.
Different Types of Trade Marks
Whilst there are many types of trade marks that you can apply to register, below are some key examples.
Word Trade Mark
A word trade mark is a very common registered trade mark. It is a purely verbal sign that only covers words and not any additional visual elements. However, in saying that, a word trade mark can provide broad protection given it also covers the word(s) in any font and colour.
Figurative Trade Mark
A figurative mark includes both verbal and visual elements, such as a business logo. Business owners often decide to also register the words as a separate word mark in addition to their logo. This way, they can gain broad protection for their trade mark. This also means that the owner can retain protection for the words separately if they change their logo.
Certification Trade Mark
A certification trade mark (CTM) demonstrates that the goods or services meet a particular standard. For example, businesses can use the ‘Australian Made’ CTM if their goods or services comply with the specific rules of the ‘Australian Made’ CTM. You should note that a CTM application involves different processes to a standard trade mark application. Namely, the Australia Competition and Consumer Commission must also assess your chosen certification rules.
Sound Trade Mark
A sound trade mark can give you protection for a sound concerning a good or service. To register a trade mark for your sound, you must submit a sound file with your application. Additionally, you must be able to represent the sound graphically, such as using musical notation.
Shape Trade Mark
A shape trade mark is a three-dimensional shape that you use to distinguish your business’ goods or services. Although you might obtain a shape trade mark for things like product packaging, it will be difficult to register a trade mark for shapes that are commonly used in your industry. For example, registering a trade mark for the shape of a standard wine bottle would be difficult.
Colour Trade Mark
Whilst you may use a specific colour as a trade mark, it can be difficult to register this trade mark. This is because you must support your trade mark application with significant evidence that the colour can distinguish your business’ goods and services from others in the market. A notable example of a registered colour trade mark is Cadbury’s signature purple.
Scent Trade Mark
A scent trade mark is a distinctive smell you use to distinguish your business’ goods or services from others. To qualify as a registered trade mark, the scent must be an unusual or distinctive smell that others associate with your particular product or service. In this sense, a scent trade mark can be difficult to register.
Series Trade Mark
A series trade mark consists of multiple versions of one trade mark. For example, you could file for the trade mark ‘Ayesha’s Cafe’ and include multiple variations that specify a particular location, like ‘Ayesha’s Cafe NSW’ or ‘Ayesha’s Cafe VIC’. A series trade mark can be useful if your brand is associated with multiple goods and services. For example, a business that offers clothing, footwear or headwear items might use a series trade mark.
In order for a series application to be valid, the main features of your trade marks must be the same. Your trade marks can only differ between the:
- statements or representations as to the goods or services being claimed;
- statements or representations as to the price, quality or names of places; or
- the colour of any part of the trade mark.
Given the cost and time involved with registering a series trade mark, it would be wise to seek legal advice. Doing so can ensure your application is fit for IP Australia’s examination.
Registering your trade mark can provide you with more robust protection. Before you register your trade mark with IP Australia, it might be helpful to consider the different types of trade marks, including word, figurative, certification, sound, shape, colour, scent and series trade marks. If you are thinking of registering your trade mark, our experienced trade mark lawyers would be happy to assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
To obtain legal protection in Australia, you must register your trade mark with IP Australia.
Registering your trade mark gives you the right to:
• take action for trade mark infringement;
• use your trade mark to the exclusion of others; and
• commercialise your trade mark by licensing or selling your trade mark.