As a business owner, protecting your brand with a trade mark is a vital step. In particular, having a registered trade mark can grant you exclusive rights that ensure you stand out in the market. However, submitting a trade mark application can be a complicated process, and there are several factors you should consider beforehand to ensure your application is successful. This article will outline five key considerations to know when preparing your application.
1. Trade Mark Types
A trade mark is a sign that distinguishes your goods or services from those of other businesses. Each ‘sign’ is considered a different trade mark. Common trade marks include:
- business names;
- slogans;
- logos; or
- a combination of the above (a composite trade mark).
Furthermore, you may be considering a less common trade mark, such as a:
- individual letter or number;
- colour, like Tiffany & Co blue;
- sound, for instance, a jingle;
- shape;
- scent; or
- aspect of packaging.
Your primary consideration when choosing what trade mark to register should be its use.
For instance, if you are trying to protect a business name, registering the words provides the broadest protection. This protects the use of the words in different fonts or styles.
If you register your trade mark in a specific typeface, font or style, trade mark protection will be more limited.
2. Goods and Services Classes
When submitting a trade mark application, you must specify the goods or services that will be sold under the mark. In Australia, goods and services are divided into 45 classes, following the Nice Classification system.
You should register the trade mark for the type of goods and/or services you plan to provide. For example, a clothing label will require protection in relation to clothing in class 25, but will not need protection regarding advertising services or retail services in class 35. If, on the other hand, you sell clothing made and branded with another producer’s labels, protection concerning retail services in class 35 is more appropriate.
The table below outlines some risks of incorrectly choosing trade mark classes.
| Risk | Explanation |
|---|---|
| Non-use | If the trade mark is not used for the goods and services under which it is registered, it can be removed. |
| Increased Cost | Fees apply per class, and selecting unnecessary classes increases the cost of your application and registration. You will also have to pay more when renewing your trade mark in the future. |
| Refusal | Misclassifying goods and services can cause your application to be rejected. While you can amend this, you should aim to avoid the time and costs associated with it where possible. |
| Inadequate Protection | Failure to cover all the goods and services you will use the trade mark for leaves it inadequately protected against infringement. Importantly, expanding your range of protected classes will require a new trade mark application. |
Choosing Classes and Compiling the Specification
Since there can be some difficult nuances between trade mark classes, you should consider seeking professional advice from a trade mark lawyer. Doing so will improve the likelihood that your trade mark is accepted without issues and help ensure the coverage is appropriate for your business.
Furthermore, IP Australia provides a ‘pick list’ of pre-approved goods and services in each class. You do not need to compile a specification from the pick list, but doing so can reduce the application fee. It also ensures that the specification used is acceptable for registration within the chosen class and allows you to apply through the ‘TM Headstart’ pre-filing service.
If the pick list does not adequately describe the goods or services you are claiming, you can provide a custom specification. However, you must use careful wording, ensuring the specification is sufficiently specific and clearly falls within the nominated class. For example, IP Australia will not accept the specification “providing a website” in class 38 but instead prefers “hosting a website” or “providing information via a website” (perhaps in another class).
Continue reading this article below the form3. Registration
It is important to check whether or not you can register your trade mark. The two most common problems encountered during the trade mark registration process are that the trade mark is:
- not sufficiently distinctive; and
- too similar to another trade mark.
A common misconception is that a trade mark should describe the goods or services sold or provided. Although it can seem counterintuitive, trademarks should not do so. Many business owners consider using their name to inform customers of what they sell, but in doing so, make it harder for their customers to distinguish their products from their competitors This is because other traders are likely to use the same words to describe their own products. While descriptive trade marks do exist, they are generally harder and more costly to protect and enforce.
Furthermore, ensure that your trade mark is not overly similar to an existing one. Registering a trade mark protects against the unauthorised use of deceptively similar trade marks for the same or closely related goods or services. Minor spelling differences (such as LITE vs. LIGHT or LYTE) are normally insufficient to differentiate trade marks. When comparing trade marks, the overall impression given by the marks is what matters. If there is a likelihood that consumers will confuse two trade marks, then the two marks will conflict.
To avoid this issue, conduct a thorough search on the Australian Trade Marks Search. Finding all possible conflicts and interpreting the information returned can be difficult, so consider seeking legal advice. Helpfully, IP Australia has also recently introduced a “TM Checker” search function which utilises AI technology to search for more complex trade marks such as logos and composites. This search feature may highlight to you if it believes that your mark is not distinctive.
4. Ownership
Determining the trade mark’s owner is a vital step before submitting your application. The trade mark owner must have a legal personality, meaning it must be either a:
- person;
- company;
- incorporated association;
- legislative body; or
- unincorporated association (for collective trade marks).
In most cases where the company uses the trade mark, the company will also be the trade mark owner. In some cases, however, where appropriate, a separate IP holding company may own the trade mark. Using a holding company can be beneficial in protecting your intellectual property, and you should discuss with an experienced corporate lawyer for further advice about what would be the best for your business operation.
It is important to remember that when a trade mark is jointly owned, the owners must exercise their rights together. This means that they must conduct business together – two people cannot jointly own a trade mark and use it for separate businesses.
Ensuring the trade mark’s owner is correctly recorded reduces the risk of future complications. This is because there may be times when you need to demonstrate its use, for instance, to have your application accepted. In these circumstances, IP Australia requires clear evidence that the owner is using the trade mark. If the mark remains unused, this could leave your trademark vulnerable, as people can apply to have your mark removed for non-use.
5. Application
The final step is to proceed with your trade mark application on IP Australia’s online trade mark lodgement service.
It may be helpful to lodge using a Headstart application. Using this process means that IP Australia will produce a report within five days of filing your Headstart application and provide an idea of the challenges you may face when registering your mark before the formal examination period.
Many business owners mistakenly view the trade mark application process as a mere formality. However, a trade mark is a valuable piece of intellectual property, and protecting it requires careful thought and preparation. If the trade mark registration process is not correctly performed, the mark can be inadequately protected or vulnerable to opposition. This can increase your business’s cost of developing, protecting, and enforcing your brand.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Submitting a trade mark application is the first step in effectively protecting your unique brand identity. As a result, it is essential for you to understand the application process in depth. Importantly, some key considerations are:
- selecting an appropriate type of trade mark to register;
- choosing classes to provide adequate protection;
- conducting an in-depth trade mark search;
- properly recording the trade mark owner/s; and
- completing an accurate application.
If you need help with registering a trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
To avoid applying to register a trade mark too similar to one already on the market, conduct a thorough trade mark search. You can do so online via IP Australia’s Australian Trade Mark Search. For a more detailed search, consider seeking legal assistance from an experienced lawyer.
IP Australia’s Headstart is a pre-application service. It allows you to submit your prospective application, and within five days, receive feedback about where you may be rejected. This gives you a chance to improve your application before officially submitting it.
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