As a business owner or perhaps even a trademark applicant/holder you may have heard the following terms. Their definitions are not always as obvious as they may seem! We’ve collated the following glossary to assist business owners in understanding what these words mean.
Alternative Dispute Resolution: the process of discussion (and can include mediation, arbitration and expert determination) to solve a dispute with the view of avoiding lengthy and costly legal proceedings. An “ADR” may apply, for example, where a party believes their trademark rights are being infringed and the parties wish to use an alternative resolution services to settle the dispute.
Authorised user: Typically, you would assume in the area of intellectual property, this simply means a person authorised to use the right (such as a trademark). It’s actually more complicated than this. For ‘use’ of a trademark to be deemed use by an authorised user the trademark owner must be able to demonstrate they have been exercising quality control and/or financial control around the use of that trademark. Simply showing that you gave the ok to someone else to use your trademark does not always equate to that person being recognised an ‘Authorised User’.
Infringement: Generally, the use of another person’s intellectual property without their consent where that person does not own their own IP and the unauthorised use will likely lead to confusion. Infringement is a complicated area and each case needs to be reviewed on its own merits.
IP Australia: The body that governs intellectual property, such as trademarks, designs and patents (as well as Plant Breeders Rights) in Australia
Madrid Protocol: The international treaty known as the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. This treaty includes around 95 countries and designed to provide a simplified, and often more cost effective, option to trademark holders in one member country to obtain international trademark registration and rights.
Notice of Intention to Oppose: The first document filed by a person that wishes to oppose the registration of another trademark.
Opposition Proceedings: The full process involved when a person opposes the registration of another trademark (or, if a person wishes to oppose another’s request to remove their trademark, or oppose other matters such as extensions of time). A lengthy process, comprising many stages.
Registered Trademark: Is basically a registered version of a trademark (see below). Where the details of the trademark have been entered on the register by IP Australia in accordance with the Trade Marks Act 1995.
Trademark: Any sign that one trader uses to distinguish certain goods/services from the similar goods/services of others. A sign can be a word/words, image, number, phrase, colour, shape, scent, sound or any combination of these sorts of things. A trademark exists whether registered or not.
There are many terms that come up in the area of trademarks. We welcome any feedback/comments on other terms you’ve heard and would like more information on!
BIO:
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.