What is a trade mark?
A trade mark is something that is used to distinguish your goods or services from those of other businesses. It’s something that helps to identify the source of the things that people want to buy.
Essentially, a trade mark is a brand or something that may make your brand more memorable, like your business name, product or service name, tag line or jingle. A trade mark helps your clients to identify your brand amongst the sea of competitors.
This sounds pretty straight-forward but we can’t have a discussion about trade marks without considering how the term is defined in the Trade Marks Act 1995 (Cth). While a trade mark can be registered or unregistered, the Trade Marks Act sets out what is required for a trade mark to be registered.
Understanding what a trade mark is, is essential if you’re planning on lodging a trade mark application yourself. It’s also relevant to the question of whether trade mark infringement has occurred.
What is a trade mark?
Section 17 of the Trade Marks Act says 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 by any other person”.
There are a few terms in this definition that are important and have been subject to clarification in the case law.
Under section 6 a “sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent”.
As you can see, this definition is very wide and allows all kinds of unconventional things to be trade marked such as the Coca-Cola bottle shape, the colour of pink roof batts and the “Ah, McCain (ping) you’ve done it again” voice and ping sound. The most commonly registered trade marks are simply words, phrases, devices (images) or a combination of those.
“intended to be used”
To be registered, a trade mark must be already being used by the applicant or the applicant must have an intention to use the trade mark in good faith (Hunter Douglas Australia Pty Ltd v Perma Blinds (1970) 122 CLR 49). IP Australia makes the presumption that the applicant has an intention to use the trade mark (Aston v Harlee Manufacturing Co (1960) 103 CLR 391), however a registered mark can be removed from the register if it’s shown that it’s not being used.
The trade mark must be used “to distinguish” the goods and services of one business from the goods and services of another. A trade mark will be considered not capable of distinguishing if there is a likelihood that other traders, without an improper motive, will want to use the same mark in connection with their own goods (Registrar or Trade Marks v W & G Du Cros Ltd  AC 624). This means that if your trade mark is descriptive of your types of goods or services then it is unlikely that it will be capable of distinguishing your goods and services from those of others (Kenman Kandy v Registrar of Trade Marks (2002) 122 FCR 494).
“in the course of trade”
“In the course of trade” has a wide meaning that includes buying, selling and any other commercial dealing in goods or services such as leasing or exporting (Aristoc Ltd v Rysta Ltd (1945) 62 RPC 65). Therefore, as a general rule, if you’re not engaging in business activities then you will not have a trade mark.
So there you go. 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 by any other person”. It sounds simple enough, but in reality this is a definition that cannot be understood without reference to the case law.
This definition is extremely important to the trade mark registration process and ultimately will determine whether your trade mark is capable of being registered or not.