If you have started your business, you will likely begin thinking about how to protect your product or service from competitors who may interfere with your brand. We have explained in four easy steps how to register a trademark with IP Australia including familiarising yourself with ATMOSS.

1. Determine Whether You Have a Trademark

You have invested time and money in developing your business’ name and logo and are ready to proceed to registration. However, if you incorrectly complete your application or apply for the wrong category of goods and services, IP Australia will not provide a refund, and so mistakes can be costly.

Trademarks are one type of intellectual property, along with:

  • Copyright;
  • Designs;
  • Patents; and
  • Plant breeder’s rights.

Of these, designs are most commonly confused with trademarks.

Trademarks differ from designs in that it protects a brand. Trademarks help distinguish your products, goods and services from your competitors. A common assumption is that trademarks only concern a logo. However, a trademark can be a combination of any of the following:

  • Logos;
  • Letters;
  • Numbers;
  • Words;
  • Phrases;
  • Shapes;
  • Smells;
  • Packaging;
  • Sounds;
  • Movements; and
  • Pictures.

For example, McDonald’s golden arches, the stitching in Levi’s denim jeans or Burberry’s check pattern.

On the other hand, designs protect the overall aesthetics of a product. They do not protect functionality but only concern the uniqueness of the appearance. It includes:

  • Shape;
  • Configuration;
  • Pattern; and
  • Ornamentation.

There is often considerable confusion between designs and ‘shape trademarks’. Shape trademarks are three-dimensional shapes which differentiate a product from another trader’s. Similar to designs, they are also provided where the shape is non-functional, meaning you cannot trademark a shape where:

  • The shape results because of the nature of the goods themselves; or
  • The shape is required to achieve a technical result.

An example of a non-trademarkable shape would be an egg carton. Egg cartons need to be formed in a particular manner to carry the eggs around.

The difference between the two is that a design must be new and distinct to the market. Designers who have disclosed their designs to the publics (e.g. sold their products previously or online) won’t receive protection. Conversely, shape trademarks can be existing in the marketplace before they are registered.

2. Classify Your Trademark Into One of the 45 Classes

After you determine whether or not you have a trademark, you will then need to select from IP Australia’s picklist which class of goods and services apply to your mark. You can think of the pick list as subheadings or subcategories under each class. It offers an extended list under each of the 45 classes. While it does not intend to be exhaustive, it has over 60,000 entries to ensure coverage of most goods and services.

When using the pick list, think of keywords which best describe your business. Some keyword searches will show many results under different classes. Find the items which are most appropriate to your business and are in the correct class. Some simple questions to ask yourself might include:

  • What is my product or service offering?
  • What does my business do?
  • Where is income derived from in my business?

If you feel that none of the classifications covers your trademark, you can also submit a custom description.

Furthermore, you can register for more than one class of goods and services. While it may be prudent to register for multiple classes to gain additional protection, it is advisable not to overstretch your application. Applying for too many classes can be detrimental in the long run, as applications can be made to remove trademarks that are not actively used.

This step is important to get right before you begin your application process. Once you lodge your application, you will only receive protection in the selected classes of goods and services.

3. Begin Your Trademark Search

A comprehensive trademark search can reveal registered and unregistered marks in Australia and highlight trademarks which are identical or confusingly similar to yours.

When searching Google and IP Australia’s database, you should have the following questions at the forefront:

  1. Is someone else already using your trademark?
  2. Can you protect your business name or logo through the registration process?
  3. Are there already similar trademarks which may conflict with your application?
  4. Will your potential trademark infringe on someone’s already protected rights?

Although most applicants can complete a preliminary search, successfully completing a comprehensive trademark search can prove difficult. An adequately wide but narrowed down search can be the difference between a satisfactory and unsatisfactory application.

If you decide to conduct your own search, there are numerous databases to help you including:

  • Australian Trade Marks Online Search System (ATMOSS);
  • Classification Search;
  • Trade Mark Check;
  • Trade Marks Image Viewer;
  • Australian Surname Search;
  • Trade Marks Mainframe; and
  • Business Names Applicant Search.

Of these, ATMOSS is the most commonly used search tool and provides you with an overview of all trademarks that are:

  • Registered;
  • Pending;
  • Removed;
  • Refused;
  • Not registered.

It is especially useful for conducting a word or image search. By default, ATMOSS will search for all plurals and fragments of the work. However, you can use the settings to search for:

  • Exact words;
  • Prefixes of words;
  • Parts of words;
  • Suffixes of words;
  • Phonetic words;
  • Parts of an image;
  • Exact images;
  • Fuzzy words;
  • Stems of words; and
  • Wildcards.

An important functional note about ATMOSS is that you are only able to input one word per field. For example, if you wanted to search for ‘bed and breakfast’ you would receive an error message. The solution is to enter ‘bed’ into one field, ‘and’ into the next field and  ‘breakfast into its separate field.

ATMOSS also offers other functions. For example, you can track the progress of applications with a trademark application number. You can also search for any owners, opponents and non-use applicants of associated trade marks.

What’s important to note is that ATMOSS will not provide you advice. It will not suggest whether your application is likely to be successful. Its purpose is to assist you with any obstacles in your trademark registration process.

4. Apply With IP Australia

After you determine whether you have a trademark, your class of goods and services, and have conducted a thorough search, the final step is to apply. One thing to note is that upon application, IP Australia will publish your:

  • Name;
  • Address for service;
  • Address for correspondence; and
  • Details and history of your trademark.

If you are comfortable with this, the two options available to make your application include:

  • Online Services; and
  • TM Headstart.

Online Services is IP Australia’s standard online application process. Users can log on, fill out forms, attach files, submit transactions and save progress. As part of the application process, you will need to provide:

  • Your contact details;
  • A representation of the trademark;
  • A description of the goods and services you intend to use your trademark on;
  • A list of the classes you are applying for;
  • Any translations of your trademark that may be in another language; and
  • The filing fee.

TM Headstart also requires the same information. However, it is advantageous in that one of the trademark examiners will be in contact with you within five working days of your request.

An option is provided to pre-discuss your application with the examiner based on their report. An opportunity is then given to amend or discontinue your application. At this stage, your trademark and private details are not published online. You will need to pay a Part 2 fee to continue your application within five days of receiving the examiner’s report.

Key Takeaways

Much of the process involved in registering a trademark concerns the due diligence in knowing whether you will make a successful application. Namely, determining whether you have a trademark, identifying the classes of goods and services your trademark will apply to and undertaking a comprehensive search before making your application to IP Australia. Importantly, if you are unsure about any of the steps – ask! Get in touch with our trade mark lawyers on 1300 544 755 to assist you with your application.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Stephen Yoon

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