Trade marks are an important way to protect your business’ brand. This article sets out key information about trade marks in Australia.

  • A trade mark is a sign used to distinguish your goods and services from those of other traders.
  • A trade mark is crucial in identifying your business.
  • You must register your trade mark with IP Australia for it to be legally enforceable. A registered trade mark grants you exclusive rights to commercially use the trade mark.

Trade Marks in Australia

A trade mark is a sign used to distinguish your 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 or aspect of packaging.

Registering a Trade Mark

A registered trade mark is legally enforceable. It provides you with exclusive rights to use or licence the trade mark concerning the goods or services you provide. 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

Other benefits to trade mark registration include:

  • national protection (you will have 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 you can license or sell);
  • reduced costs of future enforcement; and
  • simplified international registration.

Trade Mark Searches

Before you apply to register a trade mark, you should gather information about competitors’ trade marks. You should complete a trade mark search via the IP Australia trade mark search database to ensure your chosen trade mark: 

  • is available; and 
  • does not infringe anyone else’s rights. 

The official examination with the government office once you apply can take approximately four months. Undertaking a search identifies any issues with the registration upfront.

Key Considerations

  • 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.
  • You can also file your trade mark application via the Madrid Protocol, which simplifies the process if you want to file in multiple countries.
  • It is your responsibility as a trade mark owner to monitor infringement and determine if legal action is necessary. 

Applying for Trade Mark Registration

Your trade mark must:

  • distinguish your goods and services from those of other traders;
  • not conflict with an existing trade mark; and
  • not be prohibited.

Prohibitions

Some trade marks are prohibited by law in Australia. For example, you cannot register trade marks that:

  • contain specific words or symbols (for example, the Olympic Rings, the words “registered”, “Austrade” or “Returned Airman”);
  • contain the arms, flag or seal of the commonwealth or a state;
  • are scandalous or contrary to law; and
  • are likely to mislead or deceive.

Scandalous trade marks are offensive to other people. This does not mean merely in poor taste or rude, but truly offensive.

For example, this includes trade marks containing offensive or abusive elements that are personal, religious or racial in nature.

Misleading or deceptive trade marks must contain an element or information that is misleading or deceptive upfront.

For example, it would be deceptive to attempt to register a trade mark that included a domain name you did not own.

If you tried using a celebrity’s name in your trade mark without permission to do so, this would also be deceptive. This is because you would be suggesting an affiliation or endorsement that does not exist.

Filing the Application

When you file an application, you must choose classes of goods or services in which to file. All goods and services fall into ‘classes’ categorised under an international agreement. There are 45 classes of goods and services that have been adopted by a majority of countries around the world. Classes 1-34 cover goods and classes 35-45 cover services. LegalVision can provide you with recommendations on which classes you require.

Government Examination

The trade marks examiner will examine all of the details to ensure that:

  • you meet the basic filing requirements; and
  • your trade mark is registrable.

This process currently takes approximately three to four months. If IP Australia does not raise any issues with your application during the examination, they will issue a notice of acceptance. IP Australia will issue an Adverse Report if there are issues with your trade mark application. 

LegalVision also files a Headstart Application (i.e. a test application) to IP Australia before we file the full application. Upon filing this Headstart Application, we will receive a report from IP Australia within five business days. If IP Australia identifies any issues, we will receive an Adverse Examination Report within that five business day period instead of waiting three to four months.

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 period from application to registration is seven and a half months.

Key Considerations in Maintaining your Trade Marks

Once you have a registered trade mark, you should ensure you actively use your trade mark in the course of business. You can actively use your trade mark in advertising material, on social media and generally in the course of trade. If you do not use your trade mark, it may be removed from the trade mark register for non-use.

The earliest that a competitor can apply for non-use of your trade mark is five years after the filing date of your registered trade mark. If a competitor were to apply for non-use of your trade mark, they would need to prove that you have not been using your trade mark for three years.

Frequently Asked Questions about Trade Marks

Q: Can someone register a similar trade mark?

A: You may register a similar trade mark when you:

  • are filing for different and unrelated goods or services; or
  • used and promoted the trade mark before you sought trade mark registration, even if it concerned the same or closely related goods or services.

Q: What types of trade mark applications are there?

  1. Paper Filing (most expensive and not used by LegalVision);
  2. Pick List Filing: this means we select goods or services from a government-generated picklist for each class of your trade mark application using their terms and definition (least expensive government fee); and
  3. Own Specification Filing: this allows us to draft the goods or services in our own words rather than use the picklist. We will use this method of filing when you have an unusual product or 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: An adverse report identifies any issues with your trade mark application. 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 IP Australia to object to your trade mark are where your trade mark:

  • conflicts with a trade mark that has an earlier date than your own; or
  • may not initially be distinguishable to the goods or services of other traders.

Q: How long does trade mark registration last?

A: The initial period of protection is ten years from the initial trade mark filing date. You can renew this every ten years if you are still using your trade mark. 

How Can LegalVision Help Me?

LegalVision has helped many businesses register their trade marks. We provide a free initial assessment and fixed prices for your certainty and peace of mind. For more information about trade marks or you need help protecting your intellectual property, contact LegalVision’s IP lawyers today on 1300 544 755 or fill out the form on this page.

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