So often we are asked – what trade mark should I register? Do I register the words contained in my trade mark (answer; yes)? Should I also register my logo (answer; yes – but…)?
First and foremost, the broadest protection you can obtain from a trade mark registration is a word trade mark. Plain block letters will provide you with use of your trade mark in that form, but also in slightly stylised versions of the words.
However, when it comes to a logo – what should you do? An important consideration in registering any trade mark is to consider how will you be using the trade mark in the coming years. Trade marks are registered in Australia (and in most jurisdictions for that matter) for a period of 10 years. As such, when considering a trade mark registration for your logo, you should carefully consider what logo to file. If you file an elaborate logo for example and change that logo within the 10-year registration period, you must be mindful that the registration of the original logo can be challenged on the basis of non-use, irrespective of the word elements contained in the mark.
Any significant deviation from the trade mark as registered could ultimately result in your trade mark being removed from the Register.
This issues has recently been bought into focus in the decision of a Delegate of the Registrar of Trade Marks in Planet Plumbing SW Works Pty Ltd v Green Planet Maintenance Pty Ltd [2021] ATMO 32.
In this case Planet Plumbing SW Works Pty Ltd (Planet Plumbing) filed and subsequently registered 2 logo trade marks, one in 1999 and the other in 2009. The representation of these trade marks were as follows (respectively):
However, since 2010, Planet Plumbing has been using the following trade mark in relation to its services:
According to the Trade Marks Act 1995 (Act), any interested third party can apply to remove a trade mark from the Register on the basis that it has not been used and when this occurs, the trade must owner must prove that it has used the trade mark. If the owner cannot show use of the trade mark in the 3 years ending one month before the non-use application is filed, the Registrar has the discretion to remove the trade mark for non-use.
At this juncture, it is important to note that a different trade mark can be used on the goods and/or services covered by the registration within the relevant period provided the use is “with additions or alterations” that do not “substantially affect” its identity (section 100 of the Act).
As you can see from each representation of the marks, the words PLANET PLUMBING were used in each mark. As such, the word elements of the mark are not in question. However, the original marks were not in use. Despite this, the owner of the trade mark opposed the non-use removal actions on the basis that they had in fact used the registered marks during the relevant period in good faith with additions or alterations that did not substantially affect their identity.
The delegate disagreed with this argument and considered that the additions and alterations in the new logo mark did in fact substantially affect the identity of the earlier registered marks and directed that the registered marks be removed from the Register for non-use.
Takeaway
When considering your trade mark strategy, you should carefully consider what trade marks you wish to use into the future. Considerations of possible rebranding should be made at the outset and the trade marks filed should reflect this strategy. Where possible – a word trade mark should be filed as this will provide you with the broadest protection for your brand and may in fact be sufficient without the need to file a separate application for your logo. If you do file an application for your logo and subsequently rebrand, it is advisable to conduct a trade mark audit to ensure that your brand is properly protected.