What is a trade mark and should I register mine?

What is a trade mark?

A trade mark is a word, name, logo or image which identifies a brand in the marketplace. It can also be a colour, sound, scent, animation or 3D mark. The main purpose of a trade mark is to distinguish the goods and services of one business from another.

A trade mark can be registered or unregistered. To register a trade mark, an application is filed with the intellectual property office. The application will not automatically cover all possible goods and services. You must select the classes to cover from a list of 45 classes which are internationally recognised. For example, class 25 covers clothing while class 35 covers the retail of clothing. You must specify the goods and services to fall under that class. Although you can select as many classes as you like, there is a cost per class.

Once the application is filed, the office will examine the application to determine if it meets the legal requirements. If the legal requirements are met and there are no oppositions by third parties, then a certificate of registration will issue.

Protection is on a country-by-country basis, that is, a separate application is required for each country of interest. Each country has its own registration requirements and processes.

The benefits of a registered trade mark

While it is not compulsory to register a trade mark, for a relatively low cost you can secure a number of benefits through registration. A trade mark registration gives you:

• A national monopoly for a mark. A trade mark registration is the only legal avenue which can give you this level of protection. A registered domain name or company name do not give you this exclusivity; and
• The confidence to build awareness and equity in a mark of which you are the legal owner on public record; and
• A strong position in which to stop others misusing your brand; and
• The ability to sell or licence your registered rights; and
• A tangible asset which will be attractive to investors and buyers if you are looking to sell the business; and
• A certificate of registration which online platforms such as META and Amazon require to take action against misuse or to be part of brand protection programmes such as the Amazon Brand Registry

Can I still rely on my unregistered rights?

Yes- in certain circumstances. Many countries like New Zealand and Australia recognise unregistered marks and you can rely on common law rights such as passing off and consumers laws to enforce your trade mark. But, it is easier and cheaper to rely on a registered mark. Civil law countries like China generally do not recognise unregistered marks so registration is your only path to protection.

Using the TM and R symbols

The R symbol can only be used once a certificate of registration has issued. The TM symbol can be used on registered and unregistered marks. Both symbols place others on notice that you are claiming trade mark rights.

MoranLaw can put together a filing strategy for you to determine what to file and classes/countries to cover to ensure you have the broadest protection which aligns with your budget.