Legal Guide

The Myths of Trademarks Debunked

There's a reason many businesses choose the expert services of a trademark attorney. Trademark law and registrations are complicated and as a brand or business owner, you need to be confident that you have both protected your mark and not infringed on any rights belonging to others. Registered Trademark Attorney Jacqui Pryor of Mark My Words, helps clarify some of the most common misconceptions surrounding trademarks.

The myth: trademarks can be reserved

Unfortunately, Australian trademark law doesn't allow one to reserve a trademark for use in the future. You can only protect your mark if you have an honest intention to use it, or, if it is being used in a commercial sense to identify goods or services that are being provided. Australian trademark law does not require the applicant to prove use of the mark has commenced in order to register. However, if the mark is still not in use after three years it becomes vulnerable to removal (at the application of a third party) for not being in use.

The myth: A trade name or business name is automatically granted trademark rights

Some believe that having a registered business name or company name protects the name involved. This is not correct for the majority of businesses in Australia. To protect your business or trading name you should register that name as a trademark. By registering your mark, you are granted rights to use that name for the goods or services identified, and, granted the right to take steps if someone infringes.

The myth: A trademark is there to protect the business owner

Sure this is true, but trademarks don't exist purely for the owners’ benefit. Arguably, can protect consumers too. A trademark serves to distinguish one trader’s goods/services from the similar activities of others. A consumer learns to trust the quality of a product or service provided under a certain trademark and understands that brand to represent the trader’s product or service so does not become confused with other products in the market.

Myth: It is best to adopt a descriptive brand name

Many will suggest a descriptive name is good for business as it allows for good SEO and for consumers to easily find the business. However, a descriptive trademark is not always the best option in terms of being able to protect your brand and own it exclusively. An application for a descriptive trademark will likely be rejected at first instance by IP Australia if you attempt to register it. A trademark, by definition, is a sign that can distinguish similar goods or services offered by different traders. A descriptive name does not immediately act to distinguish one trader from another, making it more difficult to protect. Instead, use a name that will help you stand out in the marketplace, or combine a descriptive element in conjunction with other aspects of a name.

Myth: a trademark right can’t be lost

It doesn’t happen often but a trademark right can be lost. As long as you renew your trademark on time, you are unlikely to lose ownership of that mark. In Australia, a trademark registration lasts for ten years and can be renewed every ten years after this. However, there are certain scenarios that could result in a loss of rights. For example, if the trademark becomes generic. If a trademark, over time, ceases to act as a distinctive brand for one trader’s goods and becomes a generic term to describe a product a trademark could be cancelled on this basis. If the trademark is not used for a period of time, it may be removed for non-use.

Myth: Copyright is the same as a trademark

They are often get confused with one another, and they can overlap. Copyright protects ‘works’ that are created through the application of sufficient skill – for example written works and artistic works enjoy copyright protection. Trademarks are any signs you use to distinguish your goods/services from the similar activities of others. For example, a logo that features artistic work enjoys automatic copyright protection. But, a logo used as a brand for a product is also a trademark and can be protected as such. There are other differences. Copyright is not infringed by a coincidentally similar piece of work provided by another person. Trademark registration can be infringed whether the infringer created a similar brand coincidentally or not. Copyright protection expires (it has a maximum lifespan for protection), while trademarks can be owned indefinitely.

Myth: two identical trademarks cannot exist

There are, in fact, circumstances where identical trademarks can be registered on the Australian trademark database. One example is if they fall into different classes. So two identical trademarks with the same name could feasibly be registered by different owners so long as there is no overlap in the goods or services offered by each party. Another example is where a person has registered a trademark but another party files later for the same trademark and can show they are actually a prior continuous user of the mark.

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