Choosing a Suitable Trade Mark to Register – Trade Mark isn’t Identical to Existing Registered Mark

We now come to the end of the “Choosing a Suitable Trade Mark to Register” series that we have been going through for the last few months. We certainly hope that you’ve learned a lot from this series – we certainly enjoyed writing it.

As repeatedly mentioned there are plenty of advantages in registering a trade mark. That being said, what gets registered and what doesn’t is determined by the Trade Marks Act 1995 (Commonwealth). This is one of the reasons why you have to carefully consider what your trade mark is going to be – you don’t want to use a trade mark that can’t be registered, after all!

The final “ground” for the rejection of a trade mark registration is a relatively simple one. This is contained in Section 44 of the Act. This basically says that if the application is substantially identical to or similar to an existing registration or a prior pending application, the application should be rejected unless the applicant can provide evidence that there has either been honest and concurrent use of the similar mark, or evidence that the applicant had used the mark before the existing registration or the other application. Some evidence from the applicant about how they came up with the mark as well is probably a good idea.

These can be difficult questions to answer – and not everyone documents how they have been using their trade mark! If it is indeed the case that the mark is similar or identical to another mark, it might even be a better idea to revamp or revitalise your logo – after all, if the mark is similar or identical to another mark, you would run the risk that your customers could go to your competitor, after all! A re-branding could be expensive but could be a lifesaver in the long run – and most importantly, it could help you stand out from the crowd.

If you are looking to protect your trade mark but don’t know where to start, give us a call!