Deciding to register a trade mark to protect your brand is a big and exciting decision. However, you first must find out whether it will qualify for a trade mark registration. This is important because any mistakes with an application can be costly and time-consuming.

This article will set out seven issues to consider to determine whether you qualify for having a trade mark. If you can answer yes to all of the below statements, then you can likely go ahead with the trade mark registration process.

1. I Am Eligible to Own a Trade Mark

You are eligible to own a trade mark if you are:

  • an individual;
  • a company;
  • a trustee of a trust;
  • an incorporated association;
  • an unincorporated association (only for collective trade marks); or
  • a body existing under legislation (e.g. registered charity).

So, when applying to qualify for a trade mark, first make sure that you or your business fits within one of these criteria.

2. I Have a Trade Mark and Not Some Other Type of Intellectual Property (IP)

It is common to get confused between all the different types of IP protection. Before applying to qualify for a trade mark, you should ensure that what you are trying to protect is, in fact, capable of trade mark registration.

The table below is a quick guide to the key differences between trade marks and other types of IP.

 

Trade Mark Patent Registered Design Copyright Trade Secret
Definition A mark that distinguishes your business from other traders. Protects new inventions and processes. Protects the visual appearance of a product. Protects original works. Protects any information, process or method that is kept confidential.
Includes Words, numbers, logos, sounds and smells. Appliances, machines, computer-related inventions and biological inventions. Shape, configuration, pattern and ornamentation. Drawings, literature, music, film and computer programs. Secret formulas, processes and methods used in production.
Example ‘Google’ and the Google logo. GoPro’s harness system for attaching a camera to a user. The shape of the Coca-Cola bottle. The Friends sitcom scripts. The ingredients for KFC’s original recipe.

 

3. My Trade Mark Falls Within a Class of Goods or Services

When applying for a trade mark, you must choose the goods or services class that relate to the mark. The list of goods and services to choose from are divided into 45 classes and are located on the Trade Marks Classification Search.

For example, if you sell fitness clothing, you may choose ‘gym wear’ under class 25.

When deciding which goods and/or services you are relevant for your trade mark, you should ask yourself what:

  1. is the nature of my business;
  2. products and/or services do I offer; and
  3. is my business known for by my customers?

It is essential to think about these types of questions carefully because once you file your application, you will not be able to expand the list of registered goods or services to cover your mark. Instead, you will have to file an additional application to qualify for the trade mark, which is a costly and time-consuming process.

4. My Trade Mark Does Not Contain a Prohibited Sign, Word or Phrase

Before applying, you should consider whether the content of your trade mark is registrable. For your trade mark to be registrable, you must ensure that it:

  1. does not contain certain signs (e.g. flags, arms of Commonwealth);
  2. cannot be represented graphically (e.g. musical notes for a sound trade mark);
  3. does not contain scandalous matter or is contrary to law (e.g. racial or ethnic abuse, red cross); and
  4. is not likely to deceive or cause confusion (e.g. claiming that your product is ‘the best quality’ without justification).

5. My Trade Mark Distinguishes my Goods or Services From Other Traders

For your trade mark to be registrable, it must also be capable of uniquely distinguishing your goods or services, rather than purely describing what your business provides. This is because commonly used words, phrases or images should be available for all traders to use to describe their business and shouldn’t be limited to just one company.

For example, if you own a shoe repair business and want to register a trade mark for ‘Fast Shoe Repairs’, this may be seen as descriptive of the services you provide and will be difficult to register. Your trade mark should be unique enough for your customers to distinguish your business from any other traders.

6. My Trade Mark is Not Identical or Similar to an Existing Trade Mark

If your trade mark is identical or similar to an existing trade mark within the same or a similar class of goods or services, it will be harder to register.

For example, if you want to register a trade mark for ‘Dance Fever’ for a computer game under class 9 and there is an existing trade mark for ‘FEVER’ under the same class, this could make it difficult to register your trade mark.

We recommend broadly searching your trade mark on the Australian Trade Mark Search before applying to identify any similar marks.

7.  I Currently Use or Intend to Use My Trade Mark

Lastly, when applying for a trade mark, you must currently use or have the intention to use that mark in relation to the claimed class of goods or services. This may include using the trade mark in:

  • advertising;
  • business plans; or
  • legal documents.

If this is not the case, you may risk losing your trade mark.

Key Takeaways

Before applying for a trade mark, you should decide whether you will qualify for having a trade mark. In doing so, ensure that:

  1. you are eligible;
  2. you have a trade mark (as opposed to another type of IP);
  3. your trade mark falls within a class of goods and/or services;
  4. your trade mark doesn’t contain a prohibited sign;
  5. your trade mark is distinctive enough to distinguish your business;
  6. your trade mark is not identical or similar to an existing trade mark; and
  7. you use or intend to use your trade mark.

If you have any questions, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Graci Chen
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