Trade marks and brand protection

At Dundas Lawyers^®, we understand that protecting your business’s brand and trade marks is critical. Infringement and intellectual property theft is on the rise in the modern digital landscape.  For many businesses, intellectual property protection involves more than just an idea or a concept, it is essential to protect genuine business assets.

What is a trade mark?

Section 17 of the Trade Marks Act 1995 (Cth) (Trade Marks Act), states that a trade mark is:

“a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”.

In other words, a trade mark can be thought of as a badge of origin that tells consumers that particular goods and services are provided by your business.  Trade marks can be exceedingly valuable in maintaining the reputation of your business.

The need for a trade mark to be distinctive

To be capable of registration, a trade mark must be distinctive and not descriptive.  Section 41(1) of the Trade Marks Act states:

“An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons”.

Put simply, to be successfully registered, the proposed trade mark cannot be too descriptive.  For example, in the case of Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53, an application for registration was initially rejected on the grounds that the proposed trade mark lacked inherent distinctiveness and was descriptive of the services offered.  The trade mark in question was “Melbourne Bone and Joint Clinic” and was sought in relation to medical services.  Ultimately, Moshinsky J held that:

“In my view, the trade mark is not to any extent inherently adapted to distinguish the designated services from the services of other persons… the trade mark, in its ordinary signification, is directly descriptive of the services to be provided.”

The protection afforded by a registered trade mark

Under section 120 of the Trade Marks Act, a registered trade mark owner enjoys the right to prevent other traders from using a substantially identical or deceptively similar trade mark for the purpose of the goods or services in which it is registered.

Disclaimer
This page contains general commentary only about the protection of trade marks.  You should not rely on the commentary as legal advice.  Specific legal advice should be obtained to ascertain how the law applies to your particular circumstances.

Why choose Dundas Lawyers^®?

Having exerted Blood Sweat and Years^® since April 2010 we are the team that you want on your side to protect your businesses trade marks.  Some of the reasons clients choose Dundas Lawyers^® include:

• our Uncommon business acumen;
• our Uncommon expertise in transactional, compliance and litigious matters;
• our Uncommon expertise forensic case preparation;
• our Uncommon customer focus;
• the fact that we don’t just know law, we know business!
• how we leverage our Uncommon Nous^® to provide client solutions.

Need help to protect your brand?

For a confidential, no obligation initial telephone call to find out how we can help your business gain an uncommon advantage to protect its brand by trade mark registration please phone our team on either 1300 386 529 or 07 3221 0013.

Malcolm Burrows B.Bus.,MBA.,LL.B.,LL.M.,MQLS.
Legal Practice Director
T: +61 7 3221 0013 (preferred)
M: +61 419 726 535
E: mburrows@dundaslawyers.com.au

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