Introduction to Trade Marks
Trade marks are a valuable business asset and represent the identity of the brand and goods and services supplied by the business. While traditionally signifying a “badge of origin”[i] and indicator of quality, trade marks also act as a powerful marketing tool in promoting product recognition amongst consumers. Trade Mark registration in Australia under the Trade Marks Act 1995 (Cth) provides businesses with exclusive rights to use and authorise others to use the registered trade mark in respect of the goods or services for which it is registered. This monopoly right allows registered owners of trade marks to take infringement action against competitors who use trade marks which are likely to cause deception or confusion[ii].
A trade mark is a “sign” used, or intended to be used, to distinguish the goods or services dealt with or provided in the course of trade by a person from the goods or services so dealt with or provided by other persons.[iii] A “sign” is defined broadly under the Trade Marks Act 1995 (Cth) to include a letter, word, name, signature, numeral, shape colour, scent, aspect of packaging or any combination of these elements.[iv]
Not all trade marks are capable of being registered, and it is important that businesses select a mark which is:
- Distinctive and not merely descriptive;
- Sufficiently distinguishes the goods or services supplied, from that of other traders;
- Is not substantially identical with or deceptively similar to another registered trade mark[v] and likely to deceive or cause confusion[vi]
Commercial Benefits of Registration
A registered trade mark is a form of personal property and rights in the registered mark may be enforced in the same way as any other personal property.[vii] Registration of a trade mark provides a broader scope of legal protection than merely registering a business name, company name, brand name or domain name.
The valid registration of a trade mark in Australia provides the registered owner with exclusive rights to use, sell, franchise or otherwise commercialise the trade mark in respect of the goods or services for which the trade mark has been registered and take infringement action.[viii] These exclusive rights are subject to those of any pre-existing unregistered or ‘common law’ trade marks.
Common law trade marks include brand names, logos, devices and particular ‘get up’ of a business or its products which have associated goodwill. The protection of common law trade marks are limited to rights to protect goodwill by taking passing off actions or taking proceedings under the Australian Consumer Law[ix] for misleading and deceptive conduct, where a competitor has made an unauthorised use of a common law trade mark[x]. Such actions are also available to registered trade mark owners, however they can be expensive, time consuming and produce unpredictable results when compared with trade mark infringement actions under the Australian Trade Marks Act 1995 (Cth). In trade mark infringement claims, reputation of the trade mark is not a relevant consideration in assessing deceptive similarity.[xi]
A registered trade mark also provides a publicly available record of registration which may be searched by competing businesses, and act as a deterrent against competitors using the same or deceptively similar trade mark in relation to the same or similar goods or services in respect of which the trade mark is registered.
Registration Process and Requirements in Australia
The Australian trade mark registration system is governed and administered by the Australian government agency, IP Australia. Businesses should consider seeking expert legal advice prior to commencing the registration process in order to minimise the risk of an adverse examiner’s report being issued or the application for trade mark registration being rejected.
As trade mark protection only extends to the goods or services for which the trade mark is registered, it is important to identify the scope of protection that the business requires. There are 45 classes of goods and services which are set out in Schedule 1 of the Trade Marks Regulations 1995 (Cth)[xii], in accordance with the NICE Classification System.[xiii] Reflecting the surge in trade mark applications for goods and services relating to emerging technologies (eg. non-fungible tokens (NFTs), blockchain or other virtual goods) IP Australia has published guidance for applicants to assist with understanding the classification of these emerging technologies in trade mark applications.[xiv]
The first step in registering a trade mark is to undertake preliminary searches of the IP Australia trade marks Register, company names and business names registers maintained by ASIC and other relevant databases to identify whether there are any potentially conflicting registered or unregistered trade marks which may be similar to the proposed mark.
The minimum time period between the filing date of the application with IP Australia and registration of the trade mark is seven months.[xv] A brief summary of the trademark application process is outlined below.
Stage |
Process |
Timeline |
| Examination | IP Australia trade marks examiner assesses the application in accordance with the requirements of the Trade Marks Act 1995 (Cth). If the application does not meet the legislative requirements, an Adverse Examination Report will be issued. |
3-4 months |
| Respond to Adverse Examination Report (if applicable) | If an Adverse Examination Report is issued, applicant must provide evidence to overcome the objections raised in the report. |
15 months |
| Acceptance and Opposition Period | If the application passes examination and is accepted, the trade mark is advertised in the Australian Official Journal of Trade Marks. Any third party can oppose the registration of the trade mark by filing a notice of opposition, which will require the applicant to submit evidence in response. |
2 months |
| Registration | If the application proceeds to registration, it will be recorded in a publicly available Register of Trade Marks. Registration is effective for a period of 10 years from the date of filing the application, and can be renewed indefinitely for a further 10-year period by payment of a fee. |
Effective for 10 years from the date of filing the application |
It is important that businesses continue to use the trade mark and renew registration every 10 years in order to maintain the exclusive rights, or otherwise risk the registration lapsing or competitors bringing an action for non-use.
Case Study
LBJ Trademarks LLC v Bronson Olsen and Jun Min Zhou [2023] ATMO 112 (10 August 2023)[xvi]
This decision concerned the opposition by LBJ Trademarks LLC to the registration of the trade mark “Les Brons” filed by Applicants Bronson Olsen and Jun Min Zhou. The application to register the trade mark “Les Brons” was filed in Class 25 for apparel including “clothing, footwear, headwear”.
The Opponent, LBJ Trademarks LLC filed a notice of opposition providing evidence of ownership of the intellectual property rights, including the trade mark, of an internationally successful US athlete LeBron James, who is a member of the Los Angeles Lakers National Basketball Association (NBA) team. The Opponent is the owner of a trademark “LEBRON” in the classes of goods and services including the relevant Class 25.[xvii]
The Delegate of the Registrar of Trade Marks considered whether the Applicant’s trade mark in respect of goods and services was substantially identical with, or deceptively similar to, the Opponent’s registered trade mark registered in respect of similar goods.[xviii] The Delegate considered that a trade mark is taken to be “deceptively similar” to another trade mark if there is “a real risk that consumers and members of the public will have cause to wonder whether the branded goods come from the same source”.[xix] This does not involve a direct comparison between each of the marks, but rather a “general recollection or impression” of the “idea of the mark”.[xx] The Delegate found that a significant portion of the public would consider that the words “Les Brons” and “LEBRON” may be interpreted as having the same meaning in French, though they are not pronounced in the same way, and given that both marks are used for clothing, may likely cause confusion in the mind of the consumer. The Delegate found in favour of the Opponent’s ground for opposition under section 44, and opposed the registration of the trade mark “Les Brons”.[xxi]
How Stephens Lawyers & Consultants Can Assist
Stephens Lawyers & Consultants has extensive experience in advising businesses in all aspects of trade marks and other intellectual property, including by:
- Assisting with applications for registration of trade marks with IP Australia and maintaining registration;
- Responding to adverse examination reports from IP Australia or third-party oppositions to registration of trade marks;
- Developing and implementing strategies for the protection of trade marks and other intellectual property, including by undertaking audits and reviews; and
- Assisting with dispute resolution and litigation in the event of a claim of trade mark infringement.
Disclaimer: This article is not intended to be a substitute for obtaining legal advice.
© Stephens Lawyers & Consultants. 17 October 2023; Authored by Poppy Cummins, Lawyer, Stephens Lawyers & Consultants
For further information contact:
Stephens Lawyers & Consultants
Melbourne Head Office
Suite 205, 546 Collins Street, Melbourne VIC 3000
Phone: (03) 8636 9100
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[i] Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721 at [19].
[ii] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8. At [6], [14] [37]-7[39] High Court of Australia referred to this right as a monopoly.
[iii] Trade Marks Act 1995 (Cth), section 17.
[iv] Ibid, section 6.
[v] Ibid, sections 10 and 44
[vi] Ibid, sections 41, 42 and 43.
[vii] Ibid, section 21.
[viii] Ibid, section 20.
[ix] Australian Consumer Law, sections 18 and 29.
[x] JT International SA v Commonwealth of Australia British American Tobacco Australasia Limited v The Commonwealth [2012] HCA 43 at [40]
[xi] Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, at [40]
[xii] Trade Marks Regulations 1995 (Cth), Schedule 1.
[xiii] Nice Agreement Concerning the International (Nice) Classification of Goods and Services for the Purposes of the Registration of Marks (1957) (12th edition)
[xiv] IP Australia (https://www.ipaustralia.gov.au/) “’Trade mark classification guidance: Virtual goods, metaverse, NFTs, and blockchain’ – https://www.ipaustralia.gov.au/news-and-community/news/2023/08/10/22/52/new-guidance-on-trade-mark-classification-of-emerging-technologies (Accessed 11 October, 2023).
[xv] IP Australia (https://www.ipaustralia.gov.au/trade-marks/timeframes-and-fees#fx-tabs-0-panel-0) “Timeframes and fees: steps to register a trade mark” (Accessed 7 October 2023)
[xvi] LBJ Trademarks LLC v Bronson Olsen and Jun Min Zhou [2023] ATMO 112 (10 August 2023) <https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2023/112.html> at [11]-[17] (Accessed 7 October 2023)
[xvii] Ibid, at [7]-[9]
[xviii] Trade Marks Act 1995 (Cth), section 44.
[xix] LBJ Trademarks LLC v Bronson Olsen and Jun Min Zhou [2023] ATMO 112 (10 August 2023) <https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2023/112.html> at [13], citing
Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 per Kitto J at 594–5 and Registrar of Trade Marks v Woolworths [1999] FCA 1020; (1999) 93 FCR 365 per French J at [43].
[xx] LBJ Trademarks LLC v Bronson Olsen and Jun Min Zhou [2023] ATMO 112 (10 August 2023) <https://www.austlii.edu.au/cgi-bin/viewdoc/au/cases/cth/ATMO/2023/112.html> at [13], citing Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 as cited by Black CJ in Coca-Cola Company v All-Fect Distributors Ltd [1999] FCA 1721; (1999) 96 FCR 107 at [39]
[xxi] LBJ Trademarks LLC v Bronson Olsen and Jun Min Zhou [2023] ATMO 112 (10 August 2023) <https://www.austlii.edu.au/cgi-bin/viewdoc/au/casesgfr/cth/ATMO/2023/112.html> at [16] (Accessed 7 October 2023)