Everything you need to know about trade marks

A trade mark is your registered brand and is used to distinguish your business from other products and services. A trade mark can be a letter, number, word, phrase, logo, image, sound, movement, shape or scent.

Some clients believe that registering a business name is the same as a trade mark, but this is not the case.

 As the owner of a registered trade mark, you have certain exclusive rights in relation to that trade mark, such as using that trade mark for the services included in your registered class. This provides you with some asset protection for your business and/or brand. A business name does not provide you with the same protection. A registered business name just prevents someone from registering the same business name (or in some cases a business name that is too similar).

So, what is involved in a trade mark application?

The first consideration is the slogan, logo or name you want to trade mark with IP Australia. This will only be successfully registered if it distinguishes your business’s goods and services. For example: if the slogan is generic, descriptive or lacks a distinctive quality, then the registration is likely to be rejected by IP Australia.

Once you have considered whether the mark is distinguishable, we would then commence the IP Australia Trade Mark Application. You should note that any rights that arise from your registration will commence from the filing date (if your registration is successful), which is why it is important not delay any filing of a trade mark application.

The first step would be to conduct searches to ascertain whether there are any identical or similar trade marks for similar services which may result in your application being rejected. If there is an identical or similar trade mark but such mark is ‘expired’, it is important to remember that there is a 6 month ‘grace period’ in which the renewal fee can be paid, meaning that the expired mark can still be renewed during the grace period.

Once the Application is prepared and submitted, it is then examined by IP Australia who will either issue a report identifying any deficiencies in the Application or lodge a notice of advertisement of acceptance.

Once we provide you with the Notice of Advertisement of Acceptance, IP Australia will advertise this acceptance in the Official Journal of Trade Marks. It is during this stage that another person or entity has the opportunity (for two months) to oppose registration of your trade mark. Should an objection be raised, we would advise you on your opinions (as the opinions will depend on the objection). Sometimes you can amend the classes for the registration or the mark without too many issues, other times the objection is significant and may hinder your ability to obtain registration.

If there is no opposition received in relation to the registration of your trade mark, IP Australia will then provide you with a certificate of registration. The registration of your trade mark will be valid for 10 years, so you will need to renew your registration every 10 years to ensure your trademark is still valid and offers you the required protection.

Above we referred to ‘classes’ of registration for your trade mark.  There are 45 classes of registration. Classes 1 – 34 (inclusive) relate to goods and classes 35 – 45 relate to service. These can be found on the IP Australia’s website at Trade Marks Classification Search (ipaustralia.gov.au) It is important that you carefully consider the classes you want to register your trade mark as you will only be afforded protection in the classes you register and not any other class. Whilst you may think “why not just register in all classes?” this is not practical for two primary reasons. Firstly, you do not operate in all classes and therefore a broad registration is likely to be rejected by IP Australia. Secondly, you have to pay a registration fee per class, so economically it is not feasible to register each trade mark in all classes.

Given the registration of a trade mark can be a complex and a technical matter, you could also consider the pre-application services offered by IP Australia. This is an efficient and effective way to assess the likely success of your application and can save you significant time and money – although you should remember that this process does not guarantee the registration of your trade mark.

 Given the efficient nature of this service, there are strict time limits which must be adhered to. For example; once the Headstart request has been examined and the examiner has provided their initial report, you only have 5 business days to lodge amendments and to pay any relevant fees, and this cannot be extended if you require additional time.

If you would like more information on registering your trade mark, please contact our Senior Lawyer, Hannah Smith, or our Principal Law, Donna Abu-Elias for more information.

 

 

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