Submitting an Australian Trade Mark application can be a complicated process and there are a number of factors you should consider beforehand to ensure your application is successful. We created a checklist setting out the five things to know when preparing your application.
1. What Type of Trade Mark?
By definition, a trade mark is a sign used to distinguish one trader’s goods or services from those of other traders. Each ‘sign’ is considered a different trade mark.
Common trade marks include:
- Words or phrases e.g. a business name, a slogan;
- Images e.g. a logo;
- Slogans; and
- Combinations e.g. a logo containing both an image a business name.
Less common types of trade marks include:
- Individual letters or numbers;
- Sounds (e.g. the McDonalds 5-note jingle, O-O-O O’Brien!);
- Shapes (e.g. the Coca-Cola bottle);
- Scents (there is only one scent trade mark registered in Australia, a Eucalyptus smell for golf tees); and
- An ‘aspect of packaging’.
What trade mark should I apply for?
Generally, trade marks should be registered as they will be used. 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. It’s possible (although perhaps, unlikely) that someone else will be able to use or register a trade mark that contains the same word or words in a different style, without infringing the original stylised trade mark.
2. Goods/ Services
When submitting a trade mark application, you must specify the goods or services that will be sold under the mark. In Australia, and in most other countries, goods and services are divided into 45 ‘classes’ under a system known as the Nice Classification system.
It is important to register the trade mark in relation to goods and/or services that will be sold or provided in connection with that trade mark. 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, the trade mark owner sells clothing made and branded with another producer’s labels, it is more appropriate to seek protection concerning retail services in class 35.
It’s important to get the goods/services claims right, for the following reasons:
- 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 the application, registration, and renewal.
- Refusal: Misclassification of goods/services (for example, claiming clothing in class 1, instead of class 25) results in an initial refusal of the trade mark. While the specification can be amended, the hassle and associated costs can be avoided.
- Inadequate Protection: Failure to cover all the goods and services that you will use the trade mark for leaves the trade mark (and the brand) inadequately protected against infringement. While it is possible to amend the specification to limit the goods/services claimed, any expansion will require a new trade mark application.
Compiling the specification
IP Australia provides a ‘pick list’ of pre-approved goods and services in each class. It is not required to compile a specification from the pick list. However, doing so reduces the application fee, ensures that the specification used is acceptable for registration within the chosen class, and allows for application through the ‘TM Headstart’ pre-filing service.
If the pick list doesn’t adequately describe the goods or services you are claiming, it is possible to provide a custom specification. However, to ensure the specification is sufficiently specific and clearly falls within the nominated class, it needs to be carefully worded. For example, IP Australia will not accept the specification “providing a website” in class 38, but instead prefer “hosting a website” or “providing information via a website” (perhaps in another class).
Do you need help deciding on the goods/services coverage for your trade mark?
This can, in many cases, be a complicated step. If you have doubts about the coverage required, it is best to seek professional assistance. Doing so will improve the likelihood that your trade mark is accepted without issues, and help make sure the coverage is appropriate for your business.
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
- That the trade mark is too similar to another trade mark.
A common misconception is that a trade mark should describe the goods or services being sold or provided. Although it can seem counter-intuitive, trade marks should not describe what is being sold. Many business owners consider using their name to inform customers of what they sell, but in doing so, it is harder for their customers to distinguish their products from competitor products. This is because other traders are likely to use the same words to describe their own products.
Most of the biggest and recognisable brand names do not describe the products they sell – think of Apple (Computers), Samsung (Electronics), Google (Search Engine). While descriptive trade marks do exist, they are generally harder and more costly to protect and enforce.
Another common misconception is that two similar trade marks can be registered as long as they are not identical. Registering a trade mark provides protection against the unauthorised use of substantially identical or deceptively similar trade marks regarding the same or closely related goods or services. Minor spelling differences (such as LITE vs. LIGHT or LYTE) is normally insufficient to differentiate the two 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.
You can search Australia’s trade mark database via the Australian Trade Marks Online Search Service (ATMOSS). While you can conduct simple searches relatively easily, finding all possible conflicts and interpreting the information returned takes some practice.
Do you need help working out whether your trade mark is capable of being registered?
Assessing whether IP Australia will register your trade mark isn’t always a simple matter. Furthermore, successfully registering a trade mark doesn’t guarantee that using the trade mark does not infringe on someone else’s rights. Similarly, not being able to register a trade mark does not necessarily mean that it is the end of the road for that mark. Other options may be available. Where there’s any doubt about the registrability of a trade mark, its best to seek professional guidance.
Determining the trade mark’s owner is a vital step before submitting your application. Usually, the person (or entity) that uses the trade mark, is the owner of the trade mark. The trade mark owner must have a legal personality. That means it must be either:
- A person;
- A company;
- An incorporated association;
- A legislative body; or
- An unincorporated association (in the case of a collective trade mark).
In most cases where the company uses the trade mark, the company should then be the trade mark owner. In some cases, however, where appropriate, a separate IP holding company may own the trade mark.
In the cases of a sole trader or a partnership, the individuals themselves should be recorded as the owner of the trade mark. A business name isn’t a legal entity and so it can’t be the owner of a trade mark.
It is important to remember that when a trade mark is jointly owned, the owners of the trade mark must exercise their rights together. This means that they must conduct business together – two people can’t jointly own a trade mark and use the same trade mark for separate businesses.
Making sure the owner of the trade mark is correctly recorded reduces the risk of future complications. If there is a need to demonstrate use of the trade mark (either to gain acceptance of the mark, or to fight a non-use application), IP Australia requires clear evidence of use of the trade mark by the owner, or by an authorised user of the mark. A licence typically provides authorisation to use a trade mark.
If you have checked everything off your list and are confident that your trade mark will be accepted, you are ready to proceed with your trade mark application. IP Australia offers an online trade mark lodgement service through their e-services platform.
Many business owners mistakenly view the process of the trade mark application as a mere formality and essentially an administrative task. A trade mark is a valuable piece of intellectual property, and protecting it requires careful thought and preparation. If the trade mark registration process isn’t correctly performed, the mark can be inadequately protected, or vulnerable to opposition. Furthermore, a failure to adequately check that a trade mark can be protected can leave a business potentially liable for infringement, and increase the business’ cost of developing, protecting, and enforcing its brand.
Before you submit your trade mark application, it is important to consider key factors to ensure your trade mark can be successfully registered. It is vital to decide the type of trade mark you are applying for as well as specify the class of goods and/or services that will be sold or provided in relation to the trade mark. Determining whether or not IP Australia will register your trade mark, and who owns your trade mark are also essential preliminary considerations. If you have any questions, or require assistance in submitting your trade mark application, get in touch with our IP team.