In Short
- A registered trade mark gives you exclusive rights and stronger protection than unregistered marks.
- Search existing trade marks with tools like TM Checker and TM Headstart before applying.
- File under the correct classes of goods and services to secure the broadest protection.
Tips for Businesses
Registering a trade mark is one of the most effective ways to safeguard your brand. Before applying, check that your mark is unique and does not conflict with earlier rights. Using an IP specialist can save time, reduce risk, and help ensure your brand is fully protected across Australia.
Your trade mark is a sign used to distinguish your goods and services from those of other traders. Trade marks are a vital business asset, especially for a creative or innovative business.
A trade mark can be a letter, number, word, business name, phrase, sound, smell, shape, logo, picture or aspect of packaging. A trade mark adds value through brand identity and consumer recognition. For example, 2 diamond rings look identical, but the one with the Tiffany trade mark may have a considerably higher price than a less well-known brand. Other examples include the distinctive purple colour of Cadbury chocolate or the unique shape of the Moccona coffee jar. These non-traditional trade marks demonstrate how a brand can benefit from establishing recognisable features.
An IP specialist helps businesses protect and register their trade marks. If you do not register your trade mark, another business may use and register the same or a similar mark first. This new entrant may be a large competitor. What would you do? You would have a much harder time defending your brand without a registered trade mark, as you would need to rely on the more complex and costly legal actions of ‘passing off’ or ‘misleading and deceptive conduct’.
This article focuses on why you register a trade mark and is part 2 of a 5-part series on how to protect and monetise your IP. Part 1 looks at copyright, Parts 3 and 4 explain how to license or assign your IP and Part 5 focuses on protecting your IP from ex-staff.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Why Register a Trade Mark?
A registered trade mark gives you exclusive, enforceable rights in the country of registration, protecting your brand from unauthorised use. It grants you exclusive rights to use, license, or sell the registered trade mark for specified goods and services.
An unregistered trade mark has fewer legal rights and protections. To enforce a mark, you must prove ownership or reputation and show likely consumer confusion or deception. Unregistered marks protect only where used and reputed, while registered marks provide protection across Australia.
Step 1: Consider if Your Trade Mark Is Registrable
To be registrable, your trade mark must:
- distinguish your goods and services from those of other traders;
- not conflict with a trade mark with earlier rights; and
- not be prohibited.
Conflict: If someone has already registered the same or a similar trade mark, for similar goods/services (or has an application pending before you), it could be difficult for you to secure registration, due to that conflict and the likelihood of confusion occurring between your ‘brand’ and the one with earlier rights. The examiner will object if you register a red-and-white target logo for retail, as it conflicts with Target Australia’s trade mark.
Continue reading this article below the formStep 2: Search Existing Trade Marks
Search trade marks before applying to ensure yours is available and does not infringe others’ rights. IP Australia now offers an AI-powered tool called ‘TM Checker’ to assist with this initial search. In addition, IP Australia’s ‘TM Headstart’ request allows an examiner to provide a preliminary assessment of your trade mark before you file, which can save you significant time and money by identifying any initial obstacles early on in the registration process.
Searches include:
- Identical Search: Search to see whether there is any identical trade mark already registered or used in Australia, for the same/closely related goods or services.
- Register Search: Search the Australian trade mark database for any absolutely identical trade marks, or deceptively similar trade marks already pending or registered in Australia that may be raised as ‘too similar’ to yours.
- Full Availability and Infringement Search: Search to see whether there are likely to be trade marks that conflict with yours, whether there are any other areas of the Trade Marks Act that may see your trade mark as not registrable, whether there are existing businesses in Australia who have used the same name for a while and have ‘prior’ rights and generaliInternet searches.
Step 3: Apply to Register Your Trade Mark
When you file an application, you must choose classes of goods/services. An international agreement lists and organises all goods and services into ‘classes’. A majority of countries around the world have adopted the list of classes and their goods/services. There are 45 of these ‘classes’ to select from. Numbers 1-34 cover goods and numbers 35-45 cover services.
An IP specialist will help you file the application and choose which classes you require.
Key Takeaways
Trade marks are powerful business assets that protect your brand identity and set your products or services apart from competitors. Whether a word, logo, colour, or even product shape, a registered trade mark provides enforceable rights across Australia, unlike unregistered marks, which offer limited protection. Before applying, ensure your trade mark is registrable, not conflicting with earlier rights, and not prohibited by law. Conducting thorough searches, including using IP Australia’s TM Checker and TM Headstart tools, helps you avoid costly obstacles. Finally, filing in the correct classes of goods and services secures the broadest protection and ensures your brand is safeguarded from unauthorised use.
If you need assistance in protecting and monetising your IP, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
No, they are two different things. Registering a business name with ASIC simply gives you the right to trade under that name. It does not provide you with exclusive rights to the name, meaning other businesses could still use it. A trade mark gives you the exclusive right to use your brand for the specific goods and services you have registered it against.
A registered mark is protected for 10 years from the date of filing. After this period, you can renew it indefinitely for a fee every 10 years.
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