The recent trade mark battle between Australian fashion designer Katie Taylor, who sells clothes under her birth name Katie Perry, and pop star Katy Perry has highlighted the crucial significance of trade mark registration.
Katie Perry’s victory in this “David and Goliath” case serves as a reminder that registering a trade mark is essential for brand protection. Katie Perry established her “KATIE PERRY” business in 2006 and successfully registered the brand as a trade mark in Australia in 2009.
The legal dispute arose when Katy Perry, whose legal name is Katheryn Hudson, filed a trade mark for “KATY PERRY” and sought to prevent Katie Perry from registering the same trade mark. Justice Brigitte Markovic ruled that Katy Perry had infringed the KATIE PERRY trade mark through her social media promotion of clothing items and a pop-up store.
This ruling highlights the importance of trade mark registration in safeguarding one’s brand and intellectual property rights. It serves as a clear message that protecting your brand through trade mark registration is crucial in today’s competitive business landscape.
We have answered some simple questions below about trade marks and the registration process.
What is a Trade Mark?
A trade mark serves as a powerful tool in business. It allows you to distinguish your offerings from those of other traders.
A registered trade mark provides comprehensive protection for various elements that make up your brand’s identity. A registered trade mark can safeguard any of your branding elements such as symbols, letters, numbers, words, phrases, sounds, smells, shapes, logos, pictures, and even the unique aspects of your packaging.
By securing a registered trade mark, you gain the peace of mind knowing that your brand is shielded from potential infringement and unauthorised use.
What are the benefits of registering a Trade Mark?
- National Protection: By registering your trade mark, you gain protection throughout Australia, ensuring that your brand is safeguarded across the country.
- Visibility and Deterrence: A registered trade mark acts as a powerful deterrent against competitors who may attempt to misuse your brand. It enhances visibility and sends a clear message that your brand is legally protected.
- Asset Creation: Registering a trade mark transforms it into a valuable business asset. You have the option to license or sell your trade mark, leveraging its value and potentially generating additional revenue streams. The value of your trade mark increases with the success of your business.
- Cost-Effective Enforcement: Registering a trade mark reduces the costs associated with future enforcement actions. It provides a solid legal foundation, making it easier and more efficient to take legal action against infringers who use similar marks for the same or similar goods/services.
- Simplified International Registration: For expansion into international markets, registering a trade mark in Australia simplifies the process of seeking trade mark protection overseas. You can utilise mechanisms like the Madrid Protocol and extend the reach of your brand’s protection to other countries.
In summary, registering a trade mark offers numerous advantages, including exclusive rights, enhanced brand value, protection against infringement, potential asset monetization, and streamlined international registration. It is a strategic decision that empowers your business and ensures the long-term success and recognition of your brand.
Registration of a Trade Mark
Once registered, a trade mark remains effective for a period of 10 years. You can renew the registration for further 10-year periods, as long as the renewal fees are paid. This ensures that your brand continues to be protected over an extended period, giving you long-term security and peace of mind.
Registration of a trade mark usually covers the entire Commonwealth of Australia.
There are two ways Australian trade mark owners can seek trade mark protection internationally. Note, prior to applying for a trade mark overseas, you must have applied for that same trade mark in Australia.
- An application filed directly to each country.
- A single international application filed through the World Intellectual Property Organisation (WIPO) nominating the Madrid Protocol countries in which protection is sought.
How can M+E help?
M+E can help by:
- Perform an ‘IP Audit’ on your assets.
- Registering your trade mark, designs and patents.
- Ensuring your IP is protected.
We are now offering a flat fee service for trade mark searches & registrations. Get in touch today by simply clicking the “Get in touch” button below to book an appointment with one of our experienced team. Alternatively call +61 2 9166 3815 and chat to one of our knowledgeable staff.
Get in touch today and organise a meeting with Devlin Gunzenhauser.
