Trademarks - What They Are and Why They Matter

Written by Barry Meskin on 31 January 2023

Most of us are somewhat familiar with trademarks, if not in name then at least in practice. The famous Nike swoosh, the Golden Arches of McDonald’s and the iconic Google logo - all these are registered trademarks.

Instantly recognisable and synonymous with their goods and services, these trademarks are not only a valuable marketing tool but a powerful protective measure. In this guide, we’ll delve into what trademarks are, the benefits of a trademark, types of trademarks and more. 

By the end, you’ll better understand the value of a trademark and how to protect your business. So let’s get started.  


What Is a Trademark? 

A trademark is a form of intellectual property that has been formally registered and ownership claimed by an individual, business, organisation or other legal entity. Trademarks come in many forms and can be a sign, logos, images, sounds, scents, phrases and more.

Trademarks are used in business to formally link and identify a business with their chosen name, image, tag line or other sign of origin as well as protect them from infringement. Infringement occurs when another entity tries to sell its goods or services under a similar or the same trademark, hoping to gain financially off the reputation of the trademark owner.    


What Are The Benefits Of Registering A Trademark?

Trademarking is incredibly beneficial to a business. It offers you as the owner the exclusive rights to use the trademark and gives you legal rights to take action against anyone who uses it without permission. Not even the registration of a business name or domain name offers the same level of protection as a trademark is the only way to register ownership of a brand. 

Your brand and its reputation are intrinsically linked to the success of your operations. Ensuring your chosen trademark is protected helps to deter third parties from masquerading themselves or their products as part of your business. 

It also:

  • Makes it easier to enforce penalties on those who infringe and stop the behaviour
  • Can become an enduring and valuable asset for your business over time
  • Can be sold or licensed by the rights owner for further earning potential as desired
  • Can be used to secure funding from financial institutions as a valued asset 


What If I Choose Not To Register A Trademark?

In Australia, you are not required to register a trademark but you may not always be able to use your chosen logo, design, phrase or similar as you see fit. There is some level of protection available under the law for those who choose not to register a trademark, however, it is still a risk. 

Another entity could choose to register your trademark out from under you and you will have limited recourse to stop them. This means someone else can easily undermine you and profit from your hard work and reputation. It is always recommended to register a trademark and it is never too late, whether you have been in business for 10 days or 10 years, you can pursue registration. 

Registering your trademark provides proof of ownership and is the best way to ensure you can continue to use your chosen brand.


Types Of Trademarks

There are three main types of trademarks and you are required to specify the goods and/or services you want to protect.  The goods and services are broken down into 45 individual classes. 

First up, let’s look at the different types of trademarks. 

Arbitrary And Fanciful Trademarks

Arbitrary trademarks are when an existing design or word is used out of context in order to represent a service, item or brand. 

An example of an arbitrary trademark would be the Apple logo or the Shell logo - neither has any obvious connection to the products they're linked to but are well-known representations of each brand regardless. 

Fanciful trademarks are terms used to create a trademark rather than an image or logo such as the word Cadbury and the specific font used.  

Suggestive Trademarks

Ever wondered why car manufacturers use animal names such as Jaguar or Viper? These are designed to spark the imaginations of the consumers or suggest characteristics of a product. When trademarked, these are known as suggestive trademarks. While registerable, these types of trademarks are often harder to enforce in the case of infringement

Descriptive Trademarks

Used to directly describe goods and services, descriptive trademarks are quite uncommon and can be difficult to register. This is due to a description being too broad and its ability to unfairly quash competition.  

An example of this would be using a phrase such as ‘smooth and chocolatey’ for a hot chocolate product, it is not specific or unique enough to the product to allow trademarking.  


The 45 Classes Of Trademarks 

When a trademark is applied for and the filing approved, it is linked to specific goods and/or services. Trademark classes help to define where and how you can use your trademark while making it easier for you to defend yourself from infringement from those in the same industry. 

To determine or request what your trademark is to be aligned with under these classes, you’ll need to review these via IP Australia. There is much that goes into the specifics of each glass, but to give you an idea of how diverse they are, we’ve prepared a basic outline below. 

Classes 1-34 cover Goods including but not limited to:

  • Chemicals
  • Paints, varnishes and lacquers
  • Cosmetics
  • Oils, greases and lubricants
  • Pharmaceuticals
  • Metals and alloys
  • Machines, motors and engines
  • Hand tools, cutlery, razors
  • Alarms, prescription glasses, gift vouchers
  • Surgical, medical and dental instruments
  • Tools and installations of lighting, heating, cooling, drying, ventilating
  • Transport machines and apparatus
  • Firearms and ammunition
  • Jewellery, watches and clocks
  • Musical instruments
  • Paper, cardboard and printed matter
  • Rubber, asbestos, plastics, resins, insulation, tubes, hoses
  • Luggage, bags, saddlery, collars, umbrellas, animal clothing
  • Non-metal building materials
  • Furniture, amber, bone, horn, shells, picture frames
  • Household utensils and tableware
  • Ropes, nets, tarpaulins, sails, stuffing
  • Yarns and threads
  • Textiles
  • Clothing, footwear and headwear
  • Haberdashery, artificial flowers, pins and needles
  • Carpets, rugs, mats
  • Games, toys, Christmas tree decorations, video games and sporting goods
  • Meat, fish, poultry and game
  • Coffee, tea, cocoa, pasta, flour, cereals, seasonings, condiments
  • Raw and unprocessed grains, fruit, herbs, vegetables, seeds, seedlings, plants and bulbs
  • Beer, aerated waters, fruit juices
  • Alcoholic beverages and preparations for making beverages
  • Tobacco and tobacco substitutes 

Classes 35-45 cover Services including but not limited to:

  • Advertising, business management, administration 
  • Financial, monetary and banking services, insurance, real estate
  • Construction services, installation and repairs, oil and gas drilling
  • Telecommunication services
  • Travel, transport, removalist services
  • Treatment of waste, air purification, printing services, food and drink preservation
  • Education, training, entertainment, sporting and cultural activities
  • Scientific and technological services, research, design and development services, quality control and authentication
  • Food and drink services, temporary accommodation
  • Medical services, veterinary services, beauty services, care for agriculture, horticulture and forestry
  • Legal services, security services


Why Classification Matters 

Do you feel overwhelmed looking at this list? You’re not alone - and this is by no means an exhaustive rundown of the 45 classes. It is easy to feel bogged down in the details and have no idea where to begin classifying your trademark. 

The reality is if you do not properly request or assign all appropriate classes of goods and services to your trademark, you will not be adequately protected. Additionally, if your application is incorrect in its selection of classes, your trademark request may be rejected. Further, if you apply in the incorrect class you may find that your trademark cannot be enforced if you need it.


Ready to pursue a trademark application?

If you’re ready to pursue a trademark application for your business, IP Guardian can support you to simplify and streamline the process. As highly qualified patent and trademark attorneys, we have decades of experience in securing successful trademark registrations. 

We handle every step from checking for existing similar trademarks, to classification, documentation and submission with ease.  

Avoid the time, hassle and overwhelm of pursuing your trademark application online and speak with our team about a cost-effective solution handled by experienced attorneys. Book your obligation-free consultation today on 02 9071 0130.

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