Intellectual Property Law


A trademark has the potential of being the most valuable business asset.

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Trademark Lawyers Melbourne and Essendon

A trademark has the potential of being the most valuable business asset. This is a branding investment into the future of your business. A trademark is worth protecting by registration. A registered trademark protects brand and is more valuable than a business name or a domain name. By registering a trademark, a person has the exclusive legal right to use his brand on his goods and services. A trademark registration alerts other traders of intellectual property rights inherent with the trademark. It also deters others from choosing the same or similar trademark. Trademarks, like other assets, can be licensed or sold. A trademark should be something other traders would not use in the normal course of their trade. It is important to understand the limitations around the types of words that can be trademarked before deciding on a trademark.

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Passing Off

Passing off applies to protect unregistered rights associated with a business, its goods, or services. The principle underlying the tort of passing off is that “A business is not allowed to sell its own goods under the pretence that they are the goods of another but a popular business” (Perry v Truefitt (1842).

Passing off actions can be brought into a wide range of scenarios. It could be brought to protect business names and features of “get-up” or “trade dress”. The key issue is the danger of misrepresentation as to the origin of goods or services. If a business leads consumer to believe that their goods or services relate to another business when indeed there is no such relationship nor business arrangement, it creates grounds for being sued based on business misrepresenting for passing off.

Challenge with Passing off is it is often not easy to demonstrate that misrepresentation has been made, making it difficult to prove. Therefore, claimants need to substantiate their claims by evidencing that public are indeed at risk of confusion between the two businesses.

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What is the difference between trademark infringement and passing off?

The differentiating factor between the trademark infringement and passing off is that trademark deals with registered rights while passing off with unregistered rights. Passing off protects traders’ goodwill in relation to their goods and services. “Goodwill” is the brand and business reputation built in relation to specific goods or services. The brand value attracts customers. It can be held individually or can be shared by traders.

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How do I register a trademark in Australia?

To register a trademark in Australia, you need to consider the following carefully:
Please note, it is crucial to get your trademark registration application right the first time since you cannot substantially modify your trademark once your application has been filed and the details published. Experienced IP lawyers can assist you in formulating your application and advise you on area of registration for your trademark. With careful attention and expert knowledge, we can ensure that your application does not get rejected due to similar trademark already in existence.

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What kind of trademarks can I apply?

You can apply for the following types of trademarks:
If you want to register a non-traditional trademark (such as a 3D shape, jingle, or smell), you should get professional advice from a trademark lawyer on how to proceed.

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What trademarks can be registered?

A trademark must meet the conditions of the Trademarks Act 1995 to be successfully registered. The principle of trademark law is that everyday language and symbols should remain open to everyone for use. A grant of exclusive rights of common elements such as geographical names, descriptive words, common surnames, and trade symbols would deprive others of their legitimate right to use these words for their own goods and services.

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Is registration of a trademark compulsory?

A trademark registration gives the exclusive right to use that trademark for the specific goods and services. If the trademark is not registered and another person uses, a passing off action under common law could be taken, or a claim for a breach of Section 18 of the Competition and Consumer Act 2010 to stop the person to stop using your trademark. You may take an infringement action against another person who uses your trademark on the same or similar goods or services. If you own a registered trademark you have the right and the responsibility to protect it. It can be more difficult and expensive to protect a trademark without the benefit of registration as remedies available to owners of registered trademarks will not be available to unregistered users.

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What are the benefits of registering a trademark?

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Who can oppose a trademark application?

Any company, group or individual can file an opposition to a trademark application. The opponent does not need to be the owner of a similar mark or have any commercial interest in the outcome to file the opposition.

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What are grounds for a trademark opposition?

The most common grounds for opposition are that the trademark lacks distinctiveness, is likely to cause confusion, is too alike an already registered trademark and – or that the trademark applicant is not the owner of the trademark.

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What is trademark infringement?

Trademark infringement is the unauthorised use of a trademark or trademark with close resemblance in a way that is likely to cause confusion, deception, or errors about the source of the goods and/or services.

If you have a trademark registration, you can act against anyone who infringes your trademark to stop them from using your trademark. If you do not have a trademark registration, you may still be able to take action but you will need to rely on fair trading legislation or the common law action of passing off, which may be more challenging to demonstrate.

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How can I renew my trademark?

The initial period of registration of a trademark lasts for 10 years (calculated from the filing date). A trademark registration can be renewed between 12 months before the renewal is due or up to 6 months after its expiry date. Additional fees apply if the registration is renewed after the expiry date. The IP registrar will renew the trademark registration when all applicable fees are paid.