What is a Trade mark?
A trade mark is a type of intellectual property (IP) right which distinguishes your unique brand, product or service from other competitors in the market.
Trade marks can be a word or combination of words, letters, logos, slogans, taglines, catch phrases, product names or brands, aspects of packaging or labels, a distinctive shape of a product, colour, sound, scent, image, movement, sign, symbol or any combination of these.
Will a business name registration protect me?
A business name registration does not grant proprietary rights in that name to the business owner. The registration of a business name is merely a government requirement under the law to identify the individual or other legal entity that operates the business. The only way to protect your business name and prevent others from using it, is to secure its registration as a trade mark.
How can I make sure I can trade under a certain name?
This is no 100% certain guarantee that you will be able to trade under any name. However, if you obtain a registered trade mark for your name, you will be 99% certain to be able to trade under that name and to prevent other traders from using that, or a similar name in relation to the same or similar goods/services.
What makes a good trade mark?
A good trade mark is distinctive, i.e. unique. Some of the most memorable trade marks are those that were created by the owner, i.e. APPLE, COCA-COLA, STARBUCKS, GOOGLE or XEROX. While you may want to use a very descriptive term as your trade mark so as to capitalise on instant consumer recognition, this is not recommended as it is costly to obtain trade mark rights in a descriptive term (if you are able to get them at all). It is better to use the money in promoting brand awareness of your distinct trade mark so that consumers become aware of your good/service. This will provide you with greater trade mark protection, and more importantly, a more valuable business asset in the long run.
Trade Mark Application Process in Australia
Prior to Application
In most cases, it is advisable to have searches of the Australian Trade Mark Register performed prior to use of a mark and prior to filing a trade mark application. Searches provide an indication of potential obstacles to registration such as similar, previously filed marks which exist on the Australian Register.
Application
The Australian Trade Marks Register is divided into 45 classes. Each class includes goods or services which are of a similar nature. Any number of classes may be elected on one application and the costs associated with filing and registering trade marks are directly related to the number of classes which are included on the trade mark application.
Examination
Once a trade mark application has been filed, the application is then automatically examined by the Trade Marks Office within 3-4 months, unless expedited examination is requested (in which case the application is generally examined within one month of the request). If the Examiner has any objections to the application, an examination report will issue outlining the objections raised. The Applicant will then have approximately 15 months from the first examination report to overcome all of the objections and to secure acceptanceof the application. If no objections are raised, the application will proceed straight to either early acceptance or official acceptance.
Acceptance
Upon official acceptance, the Trade Marks Office will advertise the accepted application in the Official Journal.
Opposition Period
Any party may oppose the registration of the mark by filing a Notice of Opposition within two months of the advertisement of acceptance in the Official Journal. If no opposition is filed or the Applicant successfully defends an opposition, the application will then proceed to registration.
Registration
Trade marks are registered for 10 years calculated from the filing date of the application. Registration may be renewed every 10 years.
Removal
If the registered trade mark is not used as a trade mark in Australia by the registered owner, (or by an authorised user, e.g. a licensee) within a consecutive three year period, a third party may have your trade mark removed from the register. Such an application may only be made after the mark has been registered for more than three years (calculated from the date the mark proceeds to registration). Therefore, it is important to ensure that you ‘use’ your registered trade mark.
Change in ownership
If the trade mark is assigned or transferred to another party, we recommend that the change of ownership be recorded on the register.
