Trade marks serve as a valuable asset in building and maintaining your brand. Understanding how trade marks work and the associated processes can be complex. To help you out, we’ve sourced seven of the most frequently asked questions about trade marks and answered them below.
1. I received a letter with an attached invoice in the mail. Do I need to pay it?
If you or your agent recently filed an Australian trade mark application, there is a good chance you may receive unsolicited correspondence. Trade Mark ownership details are publicly available. Unscrupulous organisations may use this information to offer you their services, and some letters look like invoices to be paid. These organisations do not have official or government authority and the services they offer do not result in trade mark registration. Some examples of these organisations are IPT Register, TM-Edition Ltd., Patent and Trade Mark Organisation LLC, and Globus Edition SL. IP Australia provides a full list which you can access here. The only organisations that you should receive correspondence from about your trade mark are LegalVision, your agent or IP Australia. Please contact us if you doubt the authenticity of any correspondence received.
2. Can I start using my trade mark?
You do not have to wait until your trade mark is registered before using it. If you need to make important business decisions that will make amending your trade mark difficult or impractical, we usually suggest that you wait until your trade mark has been accepted or registered.
3. Do I use the ™ or the ® symbol?
It’s a good idea to use either the ™ or ® symbol to notify the public about your trade mark. You may use the ™ symbol for unregistered trade marks. Once your trade mark has been registered, you may start using the ® symbol.
4. How long until registration?
You should expect to wait a minimum of seven and a half months from the time of filing before IP Australia registers your trade mark. If there are objections to your trade mark application, it can take longer.
5. How to apply for international trade marks?
There is no such thing as a “global” trade mark. Trade mark registration rights are limited to the country of registration. Your Australian trade mark registration rights do not automatically extend beyond Australia’s borders. If you want to obtain trade mark registration from other countries, you will need to apply to each jurisdiction.
There are two ways of obtaining trade mark registrations from other countries. Directly applying involves submitting trade mark applications to each country’s intellectual property office. If you have an Australian trade mark application or registration you may apply through the Madrid Protocol. The Madrid Protocol allows you to apply for multiple countries using just one application, as long as the country is a member country.
6. How many more payments and how long?
There are two steps in the trade mark registration process, the application and the registration stage. You will need to pay LegalVision for preparing and filing your application (pre-filing assessment). Once your trade mark has been accepted and is ready for registration, LegalVision will process your registration.
Once IP Australia has registered your trade mark, it will be valid for ten years. If you would like to renew your registration after ten years, you will need to pay trade mark renewal fees.
7. What is the opposition period?
Following acceptance of your trade mark and before registration payment is due, your trade mark will be advertised for opposition for two (2) months. The opposition period gives the public the opportunity to review accepted trade marks and file an opposition if they believe that the trade mark should not proceed to registration. You shouldn’t be too concerned about the opposition period as only a small proportion of trade mark applications are opposed.
If you have any other questions or would like more information on trade marks, get in touch with one of our intellectual property lawyers on 1300 544 755.
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