A trademark is often described as a branding device to denote one’s goods and services. There are two types of trademarks, often referred to as common law trademarks and registered trademarks. If someone uses a deceptively similar mark to an owner’s trademark, it can amount to trademark infringement and result in legal action. Therefore, it is prudent to conduct a trademark search to check whether any caption you intend to use in a campaign is registered to avoid trademark infringement claims, even if you do not want to register it yourself.
The difference between a common law trademark and a registered trademark is that in the case of a registered trademark, the trademark owner owns it through having it registered and does not have to establish ownership to the courts if the owner challenges a person using a deceptively similar mark. In the case of a common law trademark, the owner would likely have to provide a volume of evidence to establish ownership and usage over a long period for the courts to form the view that the person should be given exclusive rights to that mark. There is no guarantee that courts would find the person should be given complete ownership of that mark. The safest way is to register the trademark through IP Australia, establish ownership, and protect it or a similar mark from being used by another business.
Suppose you are looking at using the trademark outside Australia. In that case, you should consider registering trademarks in the countries where you are likely to trade those goods and services.
Unlike copyright protection in Australia, which is automatic once the work is recorded in a physical record, you must apply for trademark protection via a process that can take months to gain a registered trademark. Application and registration fees are payable depending upon the number of marks and classes under which you wish to register the mark.
Barker & Co can assist you with conducting trademark searches and registering trademarks in Australia and via third-party suppliers, undertake the same in other jurisdictions.