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 and/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.

An IP specialist helps businesses protect and register their trade marks. If you do not register your trade marks, you face the risk that another business will use the same or a similar mark and will register this before you. This new entrant may be a large competitor. What would you do?

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.

Why register a trade mark?

A registered trade mark is legally enforceable. It gives you exclusive rights to commercially use, licence or sell goods and services with that trade mark, for the goods and services that it is registered under. By registering your trade mark, you are granted the right to use that trade mark for the goods/services nominated. An unregistered trade mark has less protection, although it has some protection from laws on misleading and deceptive conduct and passing off

Step 1: Consider is your trade mark registrable?

To be registrable, your trade mark must:

  1. distinguish your goods and services from those of other traders;
  2. not conflict with a trade mark with earlier rights; and
  3. 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.

Prohibited: Certain words and symbols are prohibited by trade mark law in Australia, or, are covered by other legislation. You cannot register trade marks that are scandalous, contrary to law or likely to mislead and deceive.

Step 2: Search existing trade marks

Before you apply to register a trademark, do a trade mark 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.

Searches include:

  1. Identical search: Search to see whether there is any identical trade mark already registered in Australia to your chosen name, for the same/closely related goods or services.
  2. 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.
  3. Full Availability & 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 general Internet Searches

Step 3: Apply to register your trade mark

When you file an application you must choose classes of goods/services. All goods and services fall into ‘classes’ that have been listed and put in place 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.

An IP specialist will help you file the application and choose which classes you require.

Conclusion

Once you’ve registered your trade mark, your business is in a stronger position to license or assign your IP, grow your business and increase your revenue. If you’re unsure about how to go about scaling your business and taking full advantage of your trade marks, call LegalVision on 1300 544 755 and get a fixed-fee quote for advice today.

Ursula Hogben

Next Steps

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