For businesses to effectively compete in today’s market, they must take steps to protect their intellectual property. In your business’ early stages, you might feel that registering your business name and domain name are sufficient protections. Unfortunately, they are not, and the more you grow, the more likely that someone will steal or copy your brand name, domain name or logo. For this reason, you should consider how you can further protect your business. We explore the benefits of registering your brand name as a trade mark and set out the five key steps to trade mark a brand name.
Why Should You Trade Mark a Brand Name?
Registering a business name and a domain is different from getting a trade mark for your brand. There are no proprietary rights afforded to business names and domain registration, and it does stop other people from registering similar domain names with a different generic top-level domain (.com, .net and .org) or a different country code (.au, .uk and .sg).
Trade marks are signs that distinguish your product or service from others’ in the marketplace. Along with business names and domain registration, trade marks are confused with other types of intellectual property, particularly design rights. The confusion arises because people tend to assume that a trade mark is just a logo. This is not accurate, however, and it is now possible to register non-traditional trade marks including sounds, smells, movements and shapes.
So what’s the difference? The Designs Act 2003 (Cth) defines designs to be the overall appearance of a product which results from one or more of its visual features. Designs are only registrable if it is new and distinctive. Trade marks, on the other hand, tend to be identifying marks, and are usually quite simple. They are not solely concerned with the visual features of a product. While they need to be distinct from other trade marks in the register, they do not need to constitute an original expression.
Once you register a trade mark, you have the right to use it exclusively. It effectively means you can stop other people from using the same or similar brand name. You can also authorise others to use your trade marked brand name by licensing it in exchange for payment. For example, you might consider this if you were to franchise your business.
The right to exclusive use that trade mark registration gives a business owner is important because it provides them with legal certainty and enforceable rights. On the other hand, failure to trade mark a brand name can place you in a precarious position should a competitor register their business under the same name as yours. If this were to occur, you would have to face the timely and costly exercise of proving that you had prior use of the mark.
We now turn to the five steps required to trade mark a brand name.
1. Preliminary Research and Questions
There are two essential questions that you’ll need to answer to trade mark a brand name:
- Do I meet the eligibility requirements to file a trade mark application?
- Is the trade mark distinctive enough?
An individual, company or incorporated association typically files a trade mark application. Common words, phrases and images are unlikely to be distinctive enough to register as a trade mark. For example, the word ‘soap’ to describe a new brand of soap or using the colour red for a safety equipment brand are unlikely to meet the distinctiveness requirement.
2. Classifying Your Trade Mark
The next step is to identify the products and services that you will offer under your trade marked brand name and image. Each trade mark application submitted to IP Australia must include a specification of goods and services. IP Australia divides the different products and services into 45 classes, with 34 classes dedicated to goods and 11 classes dedicated to services. For example:
Class 1 (a class of goods) covers chemicals used in industries like science and engineering, such as:
- unprocessed plastics,
- unprocessed artificial resins,
- fire extinguishing compositions,
- tanning substances,
- tempering and soldering preparations, and
- adhesives used in industry.
Class 35 (a class of services) covers:
- business management,
- business administration, and
- office functions.
Owners of the vast majority of businesses may need to apply for multiple classes in their trade mark application. That is because it is rare for a business’ operations to focus exclusively on a single class of goods or services. For example, the owner of a hair salon might have to apply for both Class 3 (perfumery, essential oils, non-medicated cosmetics and non-medicated hair lotions) and Class 44 (hygiene and beauty care).
It’s important that you identify all the categories of goods and services that you want your trade mark to protect before making your application. Once you have submitted your application, you will be unable to alter or expand this list.
The trade marks classification search tool will provide you with a comprehensive list of the classes and will enable you to determine the correct classification of your goods and services.
3. Conducting a Trade Mark Search
Before you apply, you should conduct a thorough search to ensure no similar trade marks are registered.
An online search, however, usually will not suffice. You must account for trade marks that are not identical but bear significant similarities to your mark, and which the search tool does not detect.
Businesses usually hire IP professionals at this point to increase their chances of a successful application. Nonetheless, the following tools are useful for those conducting a trade mark search:
- Australian Trade Mark Online Search System,
- Trade Marks Classification Search,
- Trade Mark Image Viewer, and
4. Apply to Register Your Trade Mark
Once you’ve done a thorough search of the trade marks database, you will finally be ready to file an application. IP Australia offers two application methods. The first is using the TM Headstart process, which provides an informal assessment of your trade mark before you make a standard application. The second is a standard application. Both of these application methods will incur a filing fee.
Completing the application itself is relatively straightforward – it will only take about 15 – 20 minutes to do if you have all of the requisite information outlined in the previous steps. If you find that you lack certain pieces of information you can simply save your application, log out and log on again once you have acquired them.
5. Receive Your Application Outcome
It takes the examiners at IP Australia 3-4 months to examine your trade mark application. You will receive notification, in writing, if IP Australia accepts your trade mark. Once IP Australia accepts your trade mark, it will sit on the register for between 2-5 months. IP Australia then advertises the mark and opens it to ‘opposition’ for two months. Other parties can oppose a trade mark on the following grounds:
- applicant is not the real owner of the trade mark;
- a competitor has made earlier use of the trade mark or a similar trade mark;
- applicant has no intention to use the trade mark;
- trade mark resembles one that has already acquired a lot of goodwill in Australia;
- trade mark contains a false geographic reference;
- application was defective (including where the applicant identified the incorrect class of goods or services); or
- applicant made the application in bad faith.
Opposing a Trade Mark Registration
Just as IP Australia can reject a trade mark’s addition to the register, you can also oppose the registration of a trade mark on the same grounds.
Opposing a trade mark is essentially a dispute process. The aggrieved party will send a notice of opposition to the owner of the offending trade mark. The owner of the newly registered mark can then respond to the contents of the opposition within a three-month timeframe. Likewise, the plaintiff can respond. Finally, the Registrar of Trade Marks will make a decision about your trade mark’s status, or, at the request of either party, can ask that a judge makes a decision at a hearing.
If the initial three-month period lapses without there being any valid challenges or if you are successful in answering any opposition, then your trade mark will be entered into the register.
On the other hand, if your application is unsuccessful, you will receive an adverse examination report. After receiving this report, you then have 15 months to formulate a response. The examiners may then reconsider the decision and this could result in successfully registering your trade mark.
If you have any questions or need assistance registering a trade mark for your brand name, get in touch with our trade mark registration lawyers on 1300 544 755.
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