This profile considers trademark principles, issues, searching
in this profile
The following pages cover
- the evolution of marks and trademark law
frameworks - Madrid and other agreements
- a snapshot of the Australian regime
- major writing about trademarks and trademark protection
- legislation, naming patterns, valuation and other
- marks and logos as a focus of contention about culture
- registering and protecting marks
- tools for identifying whether a mark is protected
in Australia and overseas
- a discussion of logos as an area of trademark protection
- protection of colours and shapes as trademarks
- the emergence of sounds and smells as trademarks
- questions about colours as trade marks
- geographical indications and other certification marks
cases - leading Australian disputes regarding trademarks
- background to some iconic trade marks
- historical background to the development of trademarks
as a business practice and regulatory issue
supports the discussion in the Intellectual Property Rights
guide and the Networks &
GII guide about the nature
of trademarks and tradenames in identifying web sites
and engaging in electronic commerce.
A trade mark is essentially about branding, providing
a 'sign' that distinguishes particular goods or services
from similar goods or services.
As noted in the Intellectual Property guide
elsewhere on this site, trade mark legislation is situated
at the boundary of industrial property law closest to
trade practices law, concerned with the regulation of
misleading behaviour among competitors in the marketplace.
It allows the owner of the mark to build/maintain a brand.
It also provides the consumer with a signal of quality,
potentially including the properties of the item (eg its
design and material), the manufacturer/retailer's preparedness
to stand behind the item and its status.
A trade mark can be a graphic image (a logo or illustration),
a name or a slogan. Some countries are providing trade
mark protection for three dimensional shapes (eg that
of a bottle), a sound or even a smell. When Naomi Klein
fretted in No Logo (London: Flamingo 2000) about
capitalism much of her lament was ostensibly concerned
with trademarked symbols and jingles - the detritus or
personification of a global economy - such as Nike's swoosh,
the Coca-Cola ribbon, the brunette on Redhead matches,
the dog on the EMI label or the big budgie on Rosella
The 'Madrid system' - based on the 1890s Madrid Agreement
Concerning the International Registration of Marks and
1996 Madrid Protocol - makes possible to makes it possible
to obtain trademark protection in up to 79 countries.
It also facilitates filing applications in national offices
for national protection outside the Madrid system.
Ownership of a trade mark is based on
legislation, harmonised through international agreements
that date from 1891
by a national Trade Marks Office (or equivalent registry)
protection is essentially restricted to the jurisdiction
in which the mark is registered and to the 'class' or
category under which the registration took place. Different
individuals or enterprises can register and use the same
term for products/services in distinct classes, eg beverages,
building products and computer hardware. That means the
one entity does not claim ownership of, for example, every
product that uses the word 'Eagle'.
Ownership of a registered mark has the exclusive right
to use it to identify specified goods and services, taking
legal action against infringement of that right.
Registration in Australia lasts for a specific ten years
and is thus different from copyright protection which
generally runs for the author's life plus a specific period
(usually life plus 70 years in Australia, the EU and US).
Unlike copyright, the protection for a trademark can be
renewed (eg an initial ten years plus renewal for ten
years followed by renewal for a further ten years ...)
if the fees are paid to the registry and basic conditions
about use of the mark are satisfied.
A registered trade mark is a commercial asset that can
be traded, used as collateral or to embellish a balance
The 150 page Trade-Related Aspects of Intellectual
Property Rights paper (PDF)
published by the Australian federal government's Productivity
Commission in 2002 suggested that the fundamental rationale
for exclusive rights is the prevention of free-riding,
with marks being used to
similar goods and services and to convey the message
that the good bearing the mark possesses a certain quality
... A firm that invested substantial resources in building
up its reputation through quality control and advertising
could lose much of this investment if free-riding competitors
were not prevented by law from using its trade marks
or very similar marks on their goods and services.
enterprises to build sales and value by protecting their
benefitting from reduced 'search costs' by using the
mark to predict quality and
enterprises thereby having an incentive to maintain
a consistent quality in a envronment where performance
and perception reinforce each other.
The registration mechanism in Australia (similar to that
for patents) involves an applicant identifying whether
a mark is already in use for a particular class or is
otherwise unavailable. For example there are restrictions
on use of the word ANZAC. Most countries now maintain
major databases of trade marks, often with online search
facilities. A later page of this profile highlights access
to particular databases.
An applicant typically then submits an application for
registration of a mark - in Australia to IP Australia
(formerly the national Patent & Trademarks Office).
The application includes corporate information and details
of the goods and services with which the mark would be
associated. Applications are checked using the databases
and reference to statutory exclusions. If accepted, an
application is then published and if unopposed, for example
by the owner of an existing mark, the mark is formally
recognised from the date of filing the application.
Trademark law as such emerged in the 1870s, with the first
modern registration scheme in the UK in effect from 1875
(following a range of enactments in the 1860s), the first
Japanese law in 1884 and the first Australian national
trademark law from 1905. As we've noted in discussing
trademarks, cybermarks and domain names in the Intellectual
Property guide on this site,
use of marks to identify goods dates from the Middle Ages
(if not before). There's contention about the oldest continuously
used mark and the oldest continuously used trademarks.
Contenders for the oldest continuously used marks include
Lowenbrau (in use since 1383), Stella Artois
(1366), Wielicka salt (1241?) Weihenstephaner
beer (1040?) and Weltenburger Kloster Barock Dunkel
beer (1050?). The 1266 'Bakers Marking Law' has been characterised
as the earliest English law on marks and the earliest
UK litigation over a mark dates from 1452.
The oldest continuously used UK trademark appears to be
the red triangle logo of Bass brewery, appropriately the
first registration in the UK register in 1875. Its Australian
equivalent is the Fisons pine tree logo from 1905 under
the Commonwealth enactment of that year. The first mark
in Hong Kong dates from 1874 for Nestle's condensed milk,
a reminder that globalisation predated the 1950s. The
first US national registration - alas no longer used -
was the eagle logo of Averill Paints. The first registered
mark in Japan dates from 1884 and was issued to a pharmaceutical
This site features a supplementary note on 'geographical
indications' (aka appellations)
- signs used on agricultural or other goods that have
a specific geographical origin and that possess qualities
or a reputation attributable to the place of origin.
indigenous authenticity marks
The site also discusses Indigenous
Authenticity Marks, signs to indicate that an art
or craft work has been created by (or in close association
with and authorisation by) an Indigenous person.
how many marks?
Around 700,000 trademark applications were filed in the
10 leading trademark offices (eg Germany, the UK, US,
Switzerland and Japan) from 1883 to 2005.
In 2007 WIPO reported that members of the Madrid system
(ie the leading economies) received some 36,471 applications
for international trademarks in 2006, up by 8.6% on the
previous year (PDF).
Germany (with 6,552 applications) ranked first for the
14th consecutive year, followed by France, the US, Italy
and the Benelux states. Australia accounted for around
3% of applications for international marks. The leading
filers under the Madrid system in 2006 included Siemens,
Novartis, Henkel, Nestlé and Aldi. The top three
filers from developing economies were Chinese, led by
China Network Communications Group.
TM and R
It is common, although generally not mandatory, for owners
to signal the status of marks by using a ™
or ® symbol.
The ™ denotes a mark for which registration is being
® denotes a mark that has been registered.
References to marks vary across jurisdictions. The US
refers to a trademark (one word), in contrast to Australian
usage (trade mark, ie two words).