Don’t Gamble With Your Trade Marks!

by Brett Lewis*

Your trade marks identify you and your reputation in the marketplace and are important business assets.  You need sound advice and a strategic approach to obtaining strong intellectual property protection and mitigating risks.

In Australia, if an IP dispute arises, action can be taken under the consumer protection provisions of the Australian Consumer Law but that can be difficult, even when a business reputation has been established. In that context, the focus is on whether the conduct concerned is misleading, rather than whether trade mark rights have been infringed. The only way to get trade mark rights as such is via the registration system administered under the Trade Marks Act 1995.  Registration creates legal property in the mark, and enables owners to prevent both the use and registration of the same and confusingly similar conflicting trade marks by others.  Importantly, trade mark infringement action can be taken even when a business reputation is yet to be established.

When to make a move

The above rights represent opportunities and risks. Well in advance of your launch, clearance searching should be conducted to determine infringement risks and registration prospects. For gambling, betting and gaming operations this will ideally happen when you initiate the process of seeking industry licences but in all cases trade mark considerations should be given priority as soon as commercially feasible. 

What to register

Almost any aspect of your marketing which distinguishes your product or service offerings can be protected by registration, including plain words, stylisations, graphics, logos and taglines.  

What you get

Seeking registration puts others on notice of your claim to trade mark ownership. Registration typically provides exclusivity and ownership, the right to sue for infringement, a defence to infringement allegations by others, rights you can license, rights you can sell and access to the international registration system and to domain name dispute resolution procedures.

Application Process

In Australia, an intention to use a trade mark provides a valid basis for seeking registration and evidence of use is not required to be shown before registrations are granted or renewed.

The official registration process includes an examination phase during which a search is conducted for prior conflicting registrations and applications and there is an opportunity to contest any objections raised.  It also includes an opposition phase during which others can contest your claim to ownership of the trade mark on various grounds. You can also object to third party applications if marks are too close to yours.

Scope of rights

The scope of the rights is determined largely by the products and services encompassed by the registration so they have to be identified carefully.

Australian registrations only cover Australia and if your goal is to build a global business, separate clearance searching and registrations should be pursued in existing and potential international markets of interest. For trade mark owners with a business on the ground in Australia, registrations here give access to the international registration system which operates under the Madrid Protocol.

Duration of rights

In Australia, registration rights run for 10 years from the filing date of the application and are renewable indefinitely for successive periods of 10 years.

Strategic Considerations

Timely action should be taken to preserve your trade mark position in Australia and if you have an Australian presence and expect to expand internationally that plan should be a part of the IP strategy at the outset. Similarly, If you have an overseas presence and expect to expand to Australia, early action to secure your position here is highly recommended.

Why take a punt on your key business assets?  Protect your IP!

___________________________________

The above comments are general in nature and are not a substitute for legal advice.

*Brett Lewis is Founding Principal of TM-Logic, an Australian law firm specialising in Australian and international trade mark law, practice and procedures: www.tm-logic.com.au. TM-Logic collaborates with Senet, Australia’s leading specialist gambling law, regulatory and compliance advisory: www.senetlegal.com.