By John Vaughan-Williams, Lawyer
In the not-for-profit sector, trade mark registration is a particularly relevant matter, with charities and not-for-profits being increasingly reliant on their branding for support from the public. In particular, with many not-for-profits moving towards undertaking commercial activities in order to achieve their objects, branding and associated protections are crucial.
There are sometimes misconceptions within the not-for-profit sector regarding protection of branding and intellectual property rights. A trade mark is a word, phrase, symbol or other visual representation which distinguishes one trader’s goods and/or services from another trader’s goods and/or services.
In the not-for-profit world, examples of trade marks could be an organisation’s logo, a slogan, or even a name of a particular fundraising campaign.
IP Australia manages the publicly searchable register of trade marks in Australia, as well as the process of registration. The term ‘trade mark’ does not necessarily refer to one that is registered; an unregistered mark is still a type of trade mark.
The ™ symbol is used for unregistered trademarks; this symbol means that the user of the mark is asserting rights to it, but that it has not been officially registered. The ® symbol represents a registered mark – such a mark should always appear on the IP Australia trade mark register.
Trade mark registration and ownership also provides the ability to license the mark to another entity, which can be useful to organisations which commonly run ventures in partnership with other organisations. In some instances, licensing will be a franchising arrangement, to which particular laws will apply. Legal advice should be sought before licensing trade marks on a large scale.
As mentioned above, there are some myths regarding the different types of protections available to trade marks. For instance, registration of a business name does not offer the ownership rights or protection that registration of a trade mark offers. A business name is a name under which an organisation trades, if it is different from its legal, entity name.
It is a legal requirement, under the Business Names Registration Act 2011 (Cth), that an entity registers a name under which it carries on a business (as a business name) if the name is different from its legal, entity name. Carrying on a business is defined as the conduct of an activity or series of activities done in the form of a profession, trade, vocation or calling.
Registration of a business name will prevent other entities from either registering an entity (such as a company) under that name, or from registering that name as a business name. However, it does not provide ownership over that name, or exclusive use rights, in the same way as a trade mark. Business name registration will also generally not give rise to a cause of action against others who use the name.
Similarly, registration of a domain name does not provide ownership or exclusive use rights. It will only prevent others from registering the same domain name, but it generally does not provide wider protection than this. Registration of a trade mark is necessary to provide the greater security.
There is no legal requirement to register a trade mark. In fact, some organisations may make a conscious choice not to register a trade mark in some instances, as they are not concerned with infringement. Infringement of a trade mark is essentially unauthorised use of it by another party. However, if infringement is a concern, then registration is the best way to allow for the infringement to be stopped in Court. It is not necessarily the case that the owner of an unregistered mark has no rights, but the rights are significantly more difficult to enforce than for the owner of a registered mark.
An application for trade mark registration occurs online, through a straightforward interface. At that stage, the applicant must choose the “classes” of goods and services in which it wishes to register its trade mark. This needs to be given close consideration, as selecting the wrong classes can later affect whether an infringement action is successful. Classes can either be selected from an existing IP Australia list, or the applicant can draft its own classes. If an applicant is uncertain regarding which classes to select, it is recommended to seek legal assistance from a lawyer who is experienced in selecting the correct classes in an infringement context.
Once an application is made for a trade mark, an analyst from IP Australia will consider, firstly, whether the trade mark is registrable at law in and of itself; and secondly, whether it is too similar to any other registered trade marks.
There are two different stages of approval – “acceptance”, and then “registration”. If acceptance is achieved, this means that the examiner recommends that, from its analysis, the trade mark should be registered. At this point, the trade mark is still not yet registered. From acceptance, there is then a two month window in which the public can lodge oppositions to the trade mark, through an online process. Grounds for opposition include that the trade mark is deceptively similar to another mark, or that registration of the mark occurred in bad faith.
Only if there are no objections during this period, or if all objections are overcome, can registration then be achieved. Once registered, the applicant is then able to enjoy all privileges and protections of being the owner of a registered mark.
Before the fee changes, there was a split in fees between application and registration (if achieved). If the trade mark failed to be registered, the applicant would never have to pay the registration fee, but there was always a fee to be paid at the point of application. Under the new structure, there is only an application fee, but no registration fee. The application fee (under both the old and the new structure) was proportionally based on the number of classes for which the application was made. If the applicant drafts its own classes, rather than choosing from the IP Australia list, the fees are higher per class. Since the changes to the fees, each type of application fee has increased by $130.00 per class. The previous registration fee of $300.00 has now been removed.
The consequence of this is that the cost applications for registration in the same number of classes will now be the same, regardless of whether registration is successful or not. The recent increases to fees apply per class, and the previous registration fee was a flat-fee (regardless of the number of classes). The result of this is that the cost of trade mark applications will now generally be greater than before.
Another significant change is the removal of fees to file an opposition to a trade mark removal. This helps to remove red tape, and also prevents the previous inherent advantage to a removal applicant. Previously, even if an opponent had a strong case against removal, the opponent may not have persisted with an opposition, due to the fees involved.
While trade mark registration is important when an organisation wishes to protect its brand, the increases in fees mean that a potential applicant should always consider the degree of likelihood of infringement, as well as whether an application is likely to be successful. For an assessment of whether a potential application is likely to be successful, it is recommended to seek legal advice.