- A trade mark is a sign used to distinguish one trader’s goods and services from those of other traders.
- Trade marks must be registered with IP Australia in order to be enforceable. Registration grants exclusive rights to commercially use the trade mark.
- To protect a trade mark, the owner must monitor for infringement and determine whether action is required.
Trade Marks in Australia
A trade mark is a sign used to distinguish one trader’s goods and services from those of other traders. A trade mark can be a letter, number, word, business name, phrase, sound, smell, shape, logo, picture and/or aspect of packaging.
Registering a Trade Mark
A registered trade mark is legally enforceable. It provides its owner with exclusive rights to use or licence the trade mark in relation to the goods or services for which it is registered. An unregistered trade mark has less protection, though it may have some protection under laws on misleading or deceptive conduct and passing off.
Benefits of Trade Mark Registration
There are other benefits to trade mark registration:
- national protection – protection throughout Australia;
- visibility – A registered trade mark is a deterrent to misuse by competitors;
- creation of an asset – A trade mark is an asset that can be licensed or sold;
- reduced costs of future enforcement; and
- simplified international registration.
Trade Mark Searches
Before you apply to register a trademark, do a trademark search to ensure your chosen trade mark is available and is not infringing anyone else’s rights. The official examination with the government office once you file an application can take approx. 4 months. Undertaking a search identifies any issues with the registration upfront.
- Intellectual Property (IP) is a vital asset that adds value through brand identity and consumer recognition.
- Your trade mark will only be enforceable in Australia. If you wish to register your trade mark internationally, you can file national applications, directly to each country of interest.
- It is the trade mark owner’s responsibility to monitor for infringement and determine if action is required.
Applying for Trade Mark Registration
Your trade mark needs to:
(i) distinguish your goods and services from those of other traders.
(ii) not conflict with an existing trade mark; and
(iii) not be prohibited.
Some trade marks are prohibited by law in Australia. For example you cannot register:
- trade marks that contain certain words or symbols, such as the Olympic Rings, the words “Registered”, “Austrade”, or “Returned Airman” (amongst others), or the Arms, flag or seal of the Commonwealth or of a State;
- trade marks that are scandalous or contrary to law;
- trade marks that are likely to mislead or deceive.
Scandalous trade marks are, ones that are offensive to other people (not necessarily simply in poor taste or rude but truly offensive) such as trade marks that include offensive and/or abusive elements that are personal, religious or racial in nature.
For a trade mark to be considered ‘misleading or deceptive,’ there must be an element that is misleading or deceptive up front. For example, if you were to attempt registering a trade mark that included a domain name that you didn’t own, this would be deceptive.
If you tried using a celebrity’s name in your trade mark but didn’t have permission to do so, this would also be deceptive, as you would be suggesting an affiliation or endorsement that doesn’t exist.
Filing the Application
When you file an application you must choose classes of goods/services. All goods and services fall into ‘classes’ categorised under an international agreement. The list of classes and the goods/services that fall into them have been adopted by a majority of countries around the world. There are 45 of these ‘classes’ to select from. Numbers 1-34 cover goods and numbers 35-45 cover services. When we help you register your trade mark we provide our recommendation on which classes you require.
The Trade Marks Examiner will examine all of the details to ensure that:
- the basic filing requirements are met; and
- your trade mark is registrable.
This process currently takes approximately 3-4 months. If no problems are found during examination IP Australia will issue a Notice of Acceptance. If issues have been identified, IP Australia will issue an Adverse Examination Report.
If your trade mark is accepted for registration and is not opposed by a third party (or, if you are opposed but come out as the successful party) the trade mark can then proceed to registration upon payment of final fees. In a straightforward case, the minimum time period from application to registration is 7.5 months.
Frequently Asked Questions about Trade Marks
Q: Can someone register a similar trade mark?
A: A similar trade mark may be registered when:
(i) the trade mark is registered for different and unrelated goods or services; or
(ii) the trade mark was used and promoted (and continues to be used) before you sought trade mark registration, even if it was in relation to the same or closely related goods or services.
Q: What types of trade mark applications are there?
- Paper Filing (most expensive and not used by LegalVision).
- Pick List Filing: this means we select goods/services from a government generated pick-list for each class of your trade mark application using their terms and definition (least expensive government fee).
- Own Specification Filing: this allows us to draft the goods/services in our own words rather than use the pick list. This can be useful when you have an unusual product/service that does not meet common definitions, or if we need to draft your specification in a way that avoids conflict with another trade mark (more costly than Pick List).
Q: What is an Adverse Report?
A: If an Adverse Report is issued, and you have had a full search and assessment conducted before filing, the issues raised will not come as a surprise. The most common reasons for the trade mark office to object to your trade mark being approved are:
your trade mark conflicts with a trade mark that has an earlier date than your own; or
your trade mark is not automatically seen as capable of distinguishing your goods/services from those of other traders.
Q: What is the Advertisement Period?
A: Once advertised, other people have 2 months from the date of advertisement to file a notice of intention to oppose.
Q: How long does trade mark registration last?
A: The initial period of protection is for 10 years from the date the Application was first filed. You can renew this each 10 years if you desire and are still using your trade mark. It is important to note that trade marks can be vulnerable to removal if they remain unused for a certain period of time.
How can LegalVision help me?
Do you require assistance registering your trade mark? We’ve helped many businesses register their trade marks and it would be our pleasure to assist you. We provide a free initial assessment and fixed prices for your certainty and peace of mind. Call LegalVision today on 1300 544 755.
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