A trade mark is a symbol, word, or phrase used to uniquely identify and represent a product or company. For example, the unique large yellow “M” arches are a trade mark of McDonald’s. They are a crucial tool for business owners who are passionate about differentiating their brand from the competition. In this article, we answer some of our most frequently asked trade mark questions to help you understand this method of protecting your brand.
1. What is the Application Process?
Once you have determined that you have a trade mark, classified it into one of IP Australia’s 45 classes and searched for similar existing trade marks, your application is ready to be lodged with IP Australia.
There are two options for your application:
Online Services is the standard application process and allows you to:
- create your application;
- submit all the relevant information; and
- pay the filing fee to get the process started.
You will receive an immediate filing date, which gives you priority if someone else uses a similar mark before your application is approved. Within 13 weeks, you will receive a formal report on the success of your application.
In comparison, the TM Headstart Application provides you with a pre-assessment from IP Australia within five days of your request. This is beneficial if you’re uncertain about the approval prospects of your mark and aren’t willing to wait 13 weeks for a report.
No matter which application process you choose, IP Australia will then conduct an examination that takes three to four months. This is then followed by a two month opposition period. In this time, IP Australia will advertise your mark as accepted, but a third party can challenge your registration if they have reason to believe that you should not be awarded the trade mark. If there is no opposition after two months, your trade mark will be registered.
All in all, this means that it can take seven months or longer for your trade mark to become legally protected.
2. Should I Register the Name or Logo of My Business?
The registration of your business name may not sufficiently protect your logo and vice versa. To register both, you will need to submit two separate applications with IP Australia. These marks offer different types of protection: a word mark will protect the name, while the device mark will protect the overall impression of the logo. Registering both provides you with maximum protection and ensures that you will not have to re-work your branding down the line.
If you only wish to register one, you should choose the one that you will use to identify your brand.
3. Can I File a Trade Mark in the US?
There are two ways you can file a trade mark in the US:
If you apply through the USPTO, you don’t need to have a trade mark application lodged in Australia. The process of registration is similar to Australia but requires more specific descriptions for the product or name you are trying to protect.
The Madrid Protocol is an international treaty, which allows owners to register their trade mark in multiple countries through one application to the World Intellectual Property Office (WIPO). The trade mark must already have a basic application, which may be an Australian or another national application, on which the Madrid Protocol Application will be based. Once submitted, WIPO will review the application details within three months to ensure that all formalities are met. If there are no issues, WIPO will pass on the application to the designated countries. These countries will then assess the trade mark in consideration of their laws and regulations.
4. What About the UK and Other Countries?
You can either apply directly to the UK government for registration or, like in the US, under the Madrid Protocol.
5. What is a Trade Mark Class?
Your trade mark is attached to one (or more) of IP Australia’s 45 specific goods and services classes.
For example, class 12 covers vehicles while class 33 covers alcohol.
If you register in the wrong category, you could face having your trade mark removed from the register for non-use.
6. Should I Register in Multiple Classes?
Registering in multiple classes provides you with extra protection, especially if your trade mark relates to various goods and services.
For example, if your brand sells clothing, footwear and furniture, you will need to register your mark across multiple classes.
The downside of doing so is that each additional class comes at an extra cost. To minimise expenses, you may want to decide which class most accurately represents your brand.
7.Can I Add Extra Classes Later?
Unfortunately, you cannot add extra classes later. IP Australia may request additional classes for an application during the examination period. However, once IP Australia approve the application, you cannot amend the original application to include other classes.
You would have to make a new application to register your mark in the extra classes. As such, it is even more critical to get it right the first time.
8.Can I Oppose Someone Else’s Trade Mark?
Yes. To oppose the registration of a trade mark, you can rely on numerous grounds. One ground is that the mark identical or deceptively similar to your registered trade mark. Another is that the applicant’s similar trade mark is likely to cause confusion with your mark.
Once you have identified one or more grounds for opposition, you should gather specific details and seek legal advice.
9. How Do I Monitor Trade Mark Infringement?
To protect your business’ brand, you should conduct regular searches for similar or identical branding. Starting with broad searches on Google and other engines, you can identify unregistered businesses in the relevant area.
Additionally, you can search the Australian Securities and Investments Commission’s business name search and IP Australia’s trade mark search to determine which companies may be in the process of registering something identical to your brand.
10. What Do I Do if Someone is Using My Trade Mark?
A first step to attempt to prevent further infringement would be to send a cease and desist letter. If this doesn’t work, you may need to commence formal legal proceedings in court.
Trade mark registration is one of the key ways to protect your brand, but the process can seem confusing. It is crucial that you are clear about:
- what you are trying to protect;
- what goods and services your brand represents; and
- what you believe the best methods to grow your business are.
If you would like more information about any of the FAQs above or you’re ready to start the process, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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