A trade mark can be a valuable asset you can use to add value to, and leverage the success of, your business. When a brand becomes successful, and the trade mark becomes well-known, often customers will refer to the related product by the trade mark name, and not by the name of the product. For example, people often refer to Nike sneakers as ‘Nikes’, rather than the specific model name of each pair of shoes.

Trade marks can be incredibly important to a business, and help to stop others from piggy-backing off your brand. This article will explain what a trade mark is and how to register a trade mark.

Defining a ‘Trade Mark’

A trade mark is a sign that distinguishes your goods or services from those of another business. However, trade marks do not only protect your brand name. While you can trade mark your name and logo, you can also trade mark:

  • letters;
  • numbers;
  • phrases;
  • sounds;
  • smells;
  • shapes;
  • pictures; or
  • an aspect of packaging.

A trade mark is effectively a business’ identity, and customers use trade marks to identify and refer to brand. A registered trade mark gives you the exclusive rights to commercially use the trade mark within a particular category of goods or services.

Requirements for a Trade Mark

To register a trade mark, you must already be using the mark, or you must intend to use it.

There is a presumption that certain types of trade marks cannot be registered. These types of trade marks include:

  • common surnames;
  • descriptive words;
  • marks that are similar to other registered marks; or
  • certain protected names.

IP Australia will typically object to these registrations at first instance, and they therefore may be difficult to register.

How to Register a Trade Mark

IP Australia handles the trade mark registration process. There are a number of steps to the process.

Step Description
1.     Search the register The first step is to confirm there are no identical or highly similar trade marks already on the register.
2.     Submit a TM Headstart application

A TM Headstart application means that IP Australia looks at your mark and gives you an idea of the likely success of your trade mark being registered.

You will receive a response from IP Australia within five business days. The response will indicate whether your trade mark is likely to be approved, or whether other people or companies are likely to raise any objections.

An application form must be completed and filed with IP Australia.

3.     Submit a trade mark application

Following the Headstart application, you can make any necessary amendments to your proposed application, and then convert your application to a full application.

Once you submit the full application, you can expect a response from IP Australia in three to four months. The response will set out whether they accept your application. The date that your application is submitted becomes your ‘priority date’.

4.     Mark is advertised in the Australian Official Journal of Trade Marks

If IP Australia accepts your trade mark, it will advertise the mark in the Journal for two months. If someone has an issue with your trade mark being registered, they will have an opportunity to oppose your application at this time.

To oppose your trade mark, they will have to prepare and file a notice of opposition, along with a statement of grounds and particulars about the reasons for the opposition.

You will then have to file a notice of intention to defend in order to contest the opposition and maintain your rights.

5.     Trade mark is registered

Once the period for opposition has passed (involving either no opposition or you defending your application successfully), IP Australia will register your trade mark.

Your registration will last for 10 years. After that, you can renew your protection.

 

Things to Note

There are a number of things to be aware of in the registration process.

The Application Must be in the Correct Name

First, you must file the application in the name of the correct owner of the trade mark. Only the owner of the mark may apply, and that owner will obtain the protection afforded by registration.

The owner of a trade mark can be an individual (or multiple individuals), a company, or an incorporated or unincorporated association.

Presumption of Registrability

Since there is a presumption that all trade marks are registrable, an examiner must accept the registration unless there is grounds for rejecting it. If they reject your trade mark, you will receive an adverse report stating the grounds for rejection: a formality issue, or an issue with the nature of the mark itself.

Length of the Process

The whole registration process takes a minimum of seven to eight months from the initial filing date. However, the lengthiness of the process results in long-term brand protection.

Registration Rights

You now have a registered trade mark, but what rights do you have?

Registration gives you the exclusive right to use, license or sell your trade mark. It is a legally enforceable right and you can prevent a competitor from using your trade mark. Therefore, if you do catch someone else using your trade mark to sell similar goods or services, you can take legal action.

A registered trade mark is a business asset, meaning you can use it in your marketing activities or monetise it. It also adds value to your business should you decide to sell your business down the track.

Key Takeaways

In conclusion, a trade mark is a valuable asset that distinguishes your goods and services from those of your competitors. If you register a trade mark successfully, you will have exclusive rights to use that mark for 10 years, at which point you can renew your protection. Registration gives you the exclusive rights to use and commercialise your trade mark.

If you would like to know more about how to register a trade mark, get in touch with LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Maya Lash
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