Talking about trade marks. acis.net.au

Transcription

1 Talking about trade marks acis.net.au

2 Today s objective To provide you with the confidence and knowledge to have a meaningful trade mark discussion with your clients.

3 Your presenters Mick Nielsen Relationship Manager Acis Zachary Pagliano Associate Redchip Thomas Bevitt Lawyer Redchip

4 Why are trade marks important? They enable a business to stand out from the crowd Goodwill attaches to them Stand out from the crowd Secure goodwill

5 What is the difference? TM designates you are using a brand as a trademark Can be used at any point in time to establish that the brand is being used as a trademark designates you have a registered trade mark in the jurisdiction in which you are using the brand Can only be used on the trade mark if registered

6 What is a company name?

7 Company name registration ASIC registers company and business names These names are merely an identifier to the public Company and business name registration grants no right of ownership Available per ASIC means it s mine, right? WRONG

8 What available really means Not identical or nearly identical to a registered name Not an undesirable or restricted word Availability test on ASIC website No conflict search of registered trade marks required

9 Common misconceptions Benefits of registration I already own the company, business or domain name so I don t need the trade mark Exclusive right to use your mark in respect of the goods & services for which it is registered I have traded for years without problems so I don t need to bother National protection your rights aren t restricted to the areas you have traded I am better off waiting to see whether my business is making money before I protect its name/logo Protection from the date of filing the application. Until this time you are unprotected and may also infringe other people s rights! If I make a slight addition or alteration to a name I will not infringe someone s trade mark Broad scope unlike company names, a trade mark is infringed if a competitor uses a substantially identical or deceptively similar mark small changes do not avoid infringement!

10 What is a trade mark? (in a legal sense)

11 What is a trade mark? A trade mark is a sign used to distinguish goods or services provided by one person from those provided by another s 17 Trade Marks Act 1995 (Cth).

12 I saw a sign A sign includes: letters, words, logos, names, signatures, numerals, devices, brands, headings, labels, tickets, aspects of packaging, shapes, colours, sounds or scents Other features Trade marks are: A registered intellectual property right Graphically represented Registered in respect of goods/services (categorised in classes)

13 Common registration issue 1 Conflict with prior mark a trade mark application will be rejected upon examination if it is too similar to an earlier trade mark s 44 TMA

14 Common registration issue 2 Descriptive trade marks generic names that are descriptive of the goods and services to which they are applied are difficult to register and enforce s 41 TMA

15 What constitutes infringement? Example 1 A trade mark for Big Gun Fishing would be infringed by: Bigger Gun Fishing Big Gun Fishing (Qld) or Gun Fishing

16 What constitutes infringement? Example 2

17 What does this mean for you?

18 Talk about real value Trade marks: Are personal property Start a conversation about structure Add value and save costs Are not just for large organisations Live forever they can be renewed indefinitely

19 Tips when talking to clients about brand Key tips when coming up with a brand that can be protected: Unique Distinctive Get utility out of your tag lines leave descriptive terms out of your trade marks Search & investigate Register & monitor

20 A great trade mark is appropriate, dynamic, distinctive, memorable and unique. - Primo Angeli

21 The good, the bad and the ugly SPOTIFY Good Marks UBER Not So Good GOOGLE APPLE

22 Trade mark searches

23 Conducting a trade mark search Is the only way to check whether a name is TRULY available Provides a defence against alleged trade mark infringement Is the first step towards preventing a competitor from using the same or a similar brand

24 Using the Acis portal 1. Download the interactive PDF order form 2. Within a new company order

25 Thank you acis.net.au