A trade mark is something used by traders to distinguish their goods and/or services from the goods and/or services of other traders. Examples of things that may be trade marks are:
- Aspects of packaging, labels
- Distinctive shape of a product
- Slogans/catch phrases
- Product names, brands
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. GOOGLE, 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.
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.
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.
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 acceptance
of the application.
Upon acceptance, the Trade Marks Office will advertise the accepted application in the Official Journal.
Any party may oppose the registration of the mark by filing a Notice of Opposition within three 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.
Trade marks are registered for 10 years calculated from the filing date of the application. Registration may be renewed every 10 years.
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 five years from the filing date. Therefore, it is important to ensure that your registered trade mark is being used correctly.
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.