Can I Register a Trade Mark for Something That Already Exists?
Emily Young
Your intellectual property (IP) is an important business asset. As the very core of your brand, you must protect your IP. Registered trade mark protection is one such way to do this. However, there are a number of key trade mark concepts that you must understand. This includes whether you can obtain a registered trade mark for something that already exists.
To help you better understand the trade mark registration process, this article will take you through the legislative requirements of trade marks and how this correlates with whether you can obtain a trade mark registration for something that already exists.
What is a Trade Mark?
A trade mark is one type of intellectual property (IP) protection that protects your business’ intangible assets from unauthorised use by third parties. Trade marks may take any number of forms, such as a:
- word;
- phrase;
- logo;
- shape;
- colour or colour combination;
- song; or
- combination of the above.
Essentially, if you have an intangible asset that meets the legislative requirements, it will be eligible for trade mark registration.
Why Should I Register a Trade Mark?
Registering a trade mark has several advantages that make it worth considering for all businesses. Firstly, a trade mark registration gives you exclusive rights to the use and commercialisation of your trade mark. If you have a registered trade mark, you will be able to enforce your rights to exclusivity by sending a cease and desist letter or even taking the matter to court. If you wish to profit off your trade mark, you can also license it to others.
Trade marks are also an excellent marketing tool, as they inherently help distinguish your brand from that of your competitors. A consistent, protected brand will ensure consumers become familiar with your business and its offerings. This will increase the value of your business over time.
Trade Mark Requirements
Before considering whether you can register a trade mark for something that already exists, there are several legal requirements that you should understand. You must meet these requirements for your trade mark to be eligible for registration.
Firstly, your trade mark must be distinctive and distinguishable. This means that it must be unique enough to operate as a badge of origin for your business (e.g. not just a descriptive term) and distinguish your goods or services from that of your competitors (e.g. not too similar to your competitor’s trade marks). One key way to determine this is to conduct a search to ensure that your trade mark is not confusingly similar to an existing trade mark.
As mentioned, to be distinctive, your trade mark must not be too descriptive of your goods or services. For example, you will find it difficult to register a trade mark for the phrase “Australia’s Best Strawberries”. This attests to your goods’ quality, and other traders may need to use a similar term to describe their similar goods.
Trade Mark Classes
Based on the legislative requirements for a trade mark, it might seem that you cannot register a trade mark for something that already exists. Although this is mostly true, a key exception to the rule is the trade mark classes that you use.
1. What Are Trade Mark Classes?
When applying for trade mark registration, you are required to nominate which classes of goods or services you will use your trade mark for. These classes are divided by an internationally recognised classification system known as the Nice classification. There are 45 classes you can choose from, broken down into 34 classes of goods and 11 classes of services.
2. Importance of Trade Mark Classes
Trade mark classes are important because they act as a mechanism to help the trade mark examiner decide if two trade marks conflict. For example, the brand name ‘DOVE’ is both a chocolate brand and a soap brand. However, as these are registered as separate trade marks in classes 3 (soap) and 30 (chocolate) respectively, there is a low risk that consumers will confuse them. The goods are sold for completely different purposes and through different channels, allowing them to co-exist.
You must conduct a trade mark search before establishing what classes are available for you to use. Some businesses will also register their trade marks under classes that they expect to use in the future, making the need to search even more important (rather than simply assuming that their protection is limited to the scope of their current use in the marketplace).
Key Takeaways
As the very core of your brand, you must protect your IP properly. One such way to do this is with a trade mark registration. However, with so many trade marks registered in Australia, it can be difficult to find a trade mark that is not similar to existing ones.
Some key things to note about trade marks is that:
- they must be distinctive; and
- two similar trade marks can co-exist where they are classified in different classes.
If you have any trade mark related enquiries, our experienced IP lawyers can help. Give them a call on 1300 657 423 or fill out the form on this page to get in touch.
Frequently Asked Questions
Having a distinctive trade mark is a legislative requirement. However, there are several other advantages to having a distinctive trade mark. For example, it serves as an excellent marketing tool and easily helps consumers identify your business.
It is a legal requirement that your trade mark is distinctive and distinguishable from other existing trade marks, which means that you often cannot trade mark something that already exists. However, trade mark classes serve as a mechanism that allows two similar trade marks operating in different categories of goods to co-exist.