When you use a brand name or specific mark, you should register it as a trademark to prevent other Australian businesses from using it.
Before registering a trademark, IP Australia will check that there aren’t competing trademarks in Australia, but not internationally.
Registering a trademark protects it in all the Australian states and territories for 10 years. You can renew it for a further 10 years at a time.
To protect your trademark internationally, you must register a trademark in every country you trade in.
Once registered, you need to use the trademark, indicate it’s a registered trademark by including an R in a circle after it ® and enforce your rights.
Enforcing your rights might include demanding the person stops using the mark or a name that is identical or very similar to yours. It could even end up in court.
For example, in a recent case an Australian designer partially won a case against US singer Katy Perry, for infringing her trademark.
Katie Jane Taylor, an Australian, designed clothes under a registered trademark Katie Perry. She took legal action against the US singer for selling clothes under the name Katy Perry while the singer was on tour in Australia.
Katy Perry, the US singer, filed a crossclaim asking that Ms Taylor’s trademark (Katie Perry) be cancelled in Australia.
In April, the federal court found that Ms Taylor had partially succeeded on her claims of trademark infringement and dismissed the crossclaim from the US team.
The judge found that the two women were in different industries and had used their trademarks simultaneously without trying to deceive or cause confusion. Both parties had been unaware of the other when they started using their trademarks.
Adam Zuchowski is a disputes lawyer and principal at Sutton Laurence King Lawyers.
For expert advice on disputes in Victoria contact Sutton Laurence King Lawyers today on 03 9070 9810 or info@slklawyers.com.au.