20 Oct – Is Your Trade Mark a Toothless Tiger or a Sabre-Toothed Hell Cat?
Australians are becoming increasingly sophisticated about intellectual property. It’s great to see traders registering their business names (because the government says they have to) and registering those business names as trade marks (because that’s the only way they have proprietary rights to the business name).
The trouble is there’s more to registering a trade mark than there is to registering a business name. Much more.
Background knowledge is not required to ensure that a registered business name has effect. However, trade marks have a murky background of case law, classification systems and international conventions, all of which must be considered if a trade mark is to be effectively registered.
In short, registering a business name is a walk in a park, while registering a trade mark can be a walk down a dark alley in the middle of the night.
The main problem with the lurking trade mark terrors is not that they’re there. The problem is that they’re there but that you often don’t find out about them until it’s too late.
Consider the trade mark classification system. All goods and services may be registered into one of forty-five classes. When completing a trade mark application form, it is necessary to think about what goods and/or services you provide, determine what’s the appropriate class and nominate that class and the relevant goods and/or services.
The trouble is, some goods and services don’t obviously fall in any class, which means that, without the assistance of a trade marks attorney or knowledge of the trade mark classification system, you’ll search the Trade Marks Office’s endless list of goods and services for something that vaguely equates to what you do or what you make. You’ll find something, nominate it and with it, that thing’s class.
When examining your trade mark, the Trade Marks Office will assume that you have correctly nominated your goods and/or services (after all, you know what you do) and won’t query whether the nominated goods and/or services actually reflect what you do. This means that you may end up having your trade mark registered in respect of something you don’t provide and, worse, something that has no relation to what you do.
For example, consider the manufacturer who made plastic flood prevention products. These products were rare and even ground breaking in Australia and did not feature in the Trade Marks Office’s list. This meant that, when the manufacturer decided to file its own trade marks, it registered the name of the products in a plastics class rather than the correct class which is, somewhat mysteriously, the building products class.
In short, the manufacturer had spent money and got itself a trade mark but it was a trade mark which was of no effective value to the manufacturer – when it came to flood prevention products, the manufacturer’s goods had no trade mark protection and the manufacturer neither had grounds to bring an infringement action nor a defence to an infringement action brought against it.
Another problem might be that you know what you do and you’re spoilt for choice as to how to classify goods and/or services. Consider this recent problem. This manufacturer made rivets for use in the manufacture of aircraft but when it prepared its application it didn’t apply to register its trade mark in respect of rivets but, rather, aircraft. The upshot – no trade mark protection for the rivets and no possibility of successfully bringing a rivet based trade mark infringement action or defending a rivet based trade mark infringement action.
Both manufacturers only realised their trade marks were “toothless tigers” after they’d spoken to Angeline Behan, the Head of the Trade Marks Department at Michael Buck IP. After talking to Angeline, they instructed her to file new trade mark applications. The goods they produce now actually have trade mark protection and the owners now can both bring and defend trade mark infringement actions.
This is trade mark protection the long way around.
If you would like to take the direct route, please call to discuss.