Most of us are somewhat familiar with trade marks, if not in name then at least in practice. The famous Nike swoosh, the Golden Arches of McDonald’s and the iconic Google logo – all these are registered trade marks.
Instantly recognisable and synonymous with their goods and services, these trade marks are not only a valuable marketing tool but a powerful protective measure. In this guide, we’ll delve into what trade marks are, the benefits of a trade mark, types of trade marks and more.
By the end, you’ll better understand the value of a trade mark and how to protect your business. So let’s get started.
What Is a Trademark?
A trade mark is a form of intellectual property that a business uses to distinguish itself or its products from its competitors. A registered trade mark has been formally registered with and ownership claimed by an individual, business, organisation or other legal entity. Trademarks come in many forms and can be a sign, logos, images, sounds, scents, phrases and more.
Trademarks are used in business to stop competitors from using the same or a similar mark in the same or a similar field of business. Infringement of a trade mark occurs when another entity tries to sell its goods or services under the same or a similar trade mark to the registered trade mark, hoping to gain financially off the reputation of the trade mark owner, by causing deception or confusion in the minds of their customers.
What Are The Benefits Of Registering A Trademark?
Trademarking is incredibly beneficial to a business. It offers you as the owner the exclusive rights to use the trade mark and gives you legal rights to take action against anyone who uses it without permission. Not even the registration of a business name or domain name offers the same level of protection as a trade mark is the only way to register ownership of a brand.
Your brand and its reputation are intrinsically linked to the success of your operations. You work hard to build that reputation in your business by providing good service, good quality products, good availability of your products, etc. Ensuring your chosen trade mark is protected helps to deter third parties from masquerading themselves or their products as part of your business.
It also:
- Makes it easier to enforce penalties on those who infringe and stop the behaviour
- Can become an enduring and valuable asset for your business over time
- Can be sold or licensed by the rights owner for further earning potential as desired
- Can be used to secure funding from financial institutions as a valued asset
What does Trademark Registration involve?
When you file a trade mark application you are required to specify the goods and/or services you want to protect. The goods and services are broken down into 45 individual classes, relating to particular fields of business. The trade mark being applied for is not allowed to be descriptive of the goods or services that they are intended to be used on – this is so that your competitors can still describe the goods or services that they are offering. Your trade mark is also not allowed to be laudatory (i.e. using words like “great”, “wonderful”, “beautiful”, “excellent”) as this would limit your competitors in advertising their goods.
When a trade mark application is filed, it gets examined for two main things:
- Is it inherently capable of distinguishing your goods and services from your competitors?
- Is it the same or similar to an existing trade mark on the register, and in the same or a similar class of goods or services?
If it is not inherently capable of distinguishing, or is too close to an existing registered mark, an objection will be raised by the trade marks examiner.
What If I Choose Not To Register A Trademark?
In Australia, you are not required to register a trade mark but you may not always be able to use your chosen logo, design, phrase or similar as you see fit. There is some level of protection available under the law for those who choose not to register a trade mark, however, it is still a risk.
Another entity could choose to register your trade mark out from under you and you will have limited recourse to stop them. This means someone else can easily undermine you and profit from your hard work and reputation. It is always recommended to register a trade mark and it is never too late – whether you have been in business for 10 days or 10 years, you can pursue registration.
Registering your trade mark provides proof of ownership and is the best way to ensure you can continue to use your chosen brand.
Levels of distinctiveness of Trademarks
Trademarks that are used in business can have different levels of distinctiveness. There are broadly five different levels of distinctiveness.
First up, let’s look at the different levels of distinctiveness of trade marks.
Made up Trademarks
Made up trade marks are words that are made up, such as “Kodak”, “Reddit”, or “Zumba”. They did not exist as words previously. These are ideal for trade mark registration as they should be inherently capable of distinguishing your goods or services from your competitors, and you would be really unlucky if someone else made up the same trade mark as you and filed it in the same or a similar class.
Suggestive Trademarks
Suggestive trade marks are suggestive of the qualities of the goods or services, but are not descriptive of the goods or services themselves. Examples of suggestive marks include “Greyhound” for bus services (suggesting speed or sleekness), “Iron Mountain” for data storage (suggesting immovability, security, or impenetrability), or The North Face for bags and outdoor clothing (suggesting ruggedness, or the challenge of a mountain climb). None of these actually describe the products. They are inherently capable of distinguishing and should be registrable if there isn’t an existing mark on the register that presents a problem.
Arbitrary and Fanciful Trademarks
Arbitrary trade marks are when an existing design or word is used out of context in order to represent a service, item or brand.
An example of an arbitrary trade mark would be the word “Apple” for computers or phones, or “Anchor” for milk, or “Cobra” for floor polish. None of these is descriptive of the goods or services themselves, and are inherently capable of distinguishing. These should be registrable if there isn’t an existing mark on the register that presents a problem.
Semi-descriptive Trademarks
Semi descriptive trade marks are trade marks that use descriptive or laudatory words or adaptations of them. An example may be “Trailock” for a trailer locking product. They may be registrable as a trade mark, (often after a lot of costly arguing with the trade marks examiner), but commercially they are not helping as every time your competitor uses the words trailer and lock together, it will dilute your semi-descriptive trade mark.
Descriptive Trademarks
Used to directly describe goods and services, descriptive trade marks are quite uncommon and can be difficult to register. An example may be “Medical Imaging Services” for medical imaging services, or “milk” for milk, or a phrase such as ‘smooth and chocolatey’ for a hot chocolate product. This is due to a description being too broad and its ability to unfairly quash competition. The rule of thumb is that if your competitors could be reasonably required to use it in the ordinary course of trade, then it should not be protectable as a trade mark.
There is also a potential commercial problem in that your customers may not be building any brand recognition in your trade mark if they don’t even understand that the trade mark is a brand, and instead think you are just describing your goods or services.
The 45 Classes Of Trademarks
When a trade mark is applied for and the filing approved, it is linked to specific goods and/or services. Trademark classes help to define where and how you can use your trade mark while making it easier for you to defend yourself from infringement from those in the same industry.
To determine or request what your trade mark is to be aligned with under these classes, you’ll need to review these via IP Australia. There is much that goes into the specifics of each glass, but to give you an idea of how diverse they are, we’ve prepared a basic outline below.
Classes 1-34 cover Goods including but not limited to:
- Chemicals
- Paints, varnishes and lacquers
- Cosmetics
- Oils, greases and lubricants
- Pharmaceuticals
- Metals and alloys
- Machines, motors and engines
- Hand tools, cutlery, razors
- Alarms, prescription glasses, gift vouchers
- Surgical, medical and dental instruments
- Tools and installations of lighting, heating, cooling, drying, ventilating
- Transport machines and apparatus
- Firearms and ammunition
- Jewellery, watches and clocks
- Musical instruments
- Paper, cardboard and printed matter
- Rubber, asbestos, plastics, resins, insulation, tubes, hoses
- Luggage, bags, saddlery, collars, umbrellas, animal clothing
- Non-metal building materials
- Furniture, amber, bone, horn, shells, picture frames
- Household utensils and tableware
- Ropes, nets, tarpaulins, sails, stuffing
- Yarns and threads
- Textiles
- Clothing, footwear and headwear
- Haberdashery, artificial flowers, pins and needles
- Carpets, rugs, mats
- Games, toys, Christmas tree decorations, video games and sporting goods
- Meat, fish, poultry and game
- Coffee, tea, cocoa, pasta, flour, cereals, seasonings, condiments
- Raw and unprocessed grains, fruit, herbs, vegetables, seeds, seedlings, plants and bulbs
- Beer, aerated waters, fruit juices
- Alcoholic beverages and preparations for making beverages
- Tobacco and tobacco substitutes
Classes 35-45 cover Services including but not limited to:
- Advertising, business management, administration
- Financial, monetary and banking services, insurance, real estate
- Construction services, installation and repairs, oil and gas drilling
- Telecommunication services
- Travel, transport, removalist services
- Treatment of waste, air purification, printing services, food and drink preservation
- Education, training, entertainment, sporting and cultural activities
- Scientific and technological services, research, design and development services, quality control and authentication
- Food and drink services, temporary accommodation
- Medical services, veterinary services, beauty services, care for agriculture, horticulture and forestry
- Legal services, security services
Why Classification Matters
Do you feel overwhelmed looking at this list? You’re not alone – and this is by no means an exhaustive rundown of the 45 classes. It is easy to feel bogged down in the details and have no idea where to begin classifying your trade mark.
The reality is if you do not properly request or assign all appropriate classes of goods and services to your trade mark, you will not be adequately protected. Additionally, if your application is incorrect in its selection of classes, your trade mark request may be rejected. Further, if you apply in the incorrect class you may find that your trade mark cannot be enforced if you need it.
Ready to pursue a trade mark application?
If you’re ready to pursue a trade mark application for your business, IP Guardian can support you to simplify and streamline the process. As highly qualified patent and trade mark attorneys, we have decades of experience in securing successful trade mark registrations.
We handle every step from checking for existing similar trade marks, to classification, documentation and submission with ease.
Avoid the time, hassle and overwhelm of pursuing your trade mark application online and speak with our team about a cost-effective solution handled by experienced attorneys. Book your obligation-free consultation today on 02 9071 0130.
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