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Trade Mark Registration

Trade Mark Registration in Australia

A registered trademark is an important business tool to protect your intellectual property and secure your brand identity.  Successfully registering a trade mark will provide exclusive rights for you to use, sell, licence the mark and take legal action to prevent others from using it. If you want to protect your position in the market, registering your unique features by trade marks of the business is crucial.

Trade marks are there so you can protect the identity of your business and products. Whilst it protects your business it also adds value to your business as key brand names all utilise IP protection such as trade marks.

To register a trademark with IP Australia, it can be an in-depth process involving a range of considerations and potential pitfalls which may lead to unsuccessful registrations. It is therefore beneficial to obtain the assistance of a trademark lawyer to assist you through this process.

Why Register A Trade Mark?

Provided your business marketing material stands out, then there is a good chance you will have trade marks that could be registered. As the owner of a registered trade mark, you are afforded enforceable intellectual property rights. These legal rights provide for exclusivity of use and to block other businesses in your class from using or profiting from the good will associated with your registered mark. When someone does, this is considered trade mark infringement and you could legally seek compensation as the wronged party. Enforcing those legal rights is usually quick and affordable.

Another benefit is that a business with registered trade marks will generally attract a higher sale price or listing price in a public float. The University of Oxford has produced research indicating that businesses with registered trade marks are more profitable than those without. In 2013, the World Intellectual Property Organisation records show about 7,000,000 trade mark applications filed worldwide, with China leading the USA by four times as many trade mark applications. Therefore, registered trade marks are very popular across the world and the need for your brand to stand out and have it protected is equally vital.

How We Can Help With The Registration Process

Appointing an expert trade marks lawyer to guide you through the process of trademark registration in Australia can save your money and time. They can advise you on matters of eligibility, availability and prospects of a successful application. The actual process is relatively simple, and generally takes some months from application until registration, but it is important to get it right from the start. Getting the right advice from the beginning will assist you in later enforcing your trade mark, should that become necessary.

Applicants can however encounter difficulties with trade mark registration in Australia. They might be rejected for such reasons as:

  • if the mark is not distinctive
  • if it is descriptive
  • if the mark is in conflict with existing similar marks
  • if the mark is opposed by another trade mark owner

Therefore the way the Application is drafted needs to be considered very carefully. An experienced trade mark lawyer can guide you through this part of the process from beginning to end.

There can also be other problems as sometimes the wrong trade mark was applied for and therefore the intended level of protection is much lower and limited, or even irrelevant. Furthermore, the trade marks database records all applied for and failed trade mark applications. Appearing on this database of failed or lapsed trade mark application can be a disadvantage in the context of future trade mark litigation.

The Trade Mark Registration Process?

There are many essential stages of the trade mark registration process. Most of the steps require careful consideration and time.

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FAQs for Trade Mark Registration

Do I have a Registerable Trade Mark?

Determining if you have a registerable trademark is the most important step.
Confusing the different intellectual property protections is a common mistake. Many confuse trade marks with design IP rights and copyright. Therefore, before you begin the trade mark registration process, it is important to establish if what you are wanting to register is in fact a registerable trade mark according to the Trade Marks Act 1995. This will prevent you wasting filing fees and valuable time in the process.

Who can apply for a Trade Mark?

To be eligible to apply for a trade mark, the owner of the mark must use, or intend to use, the mark in the goods and/or services listed in the application.
They must also be:

  • an individual;
  • a company;
  • an incorporated association (unincorporated associations can own collective trade marks);
  • a trust (if application is under the name of the trustee); or
  • a combination of the above.

A business name or trading name cannot apply for a trade mark.

What is the difference between a Registered Trade Mark and an Unregistered Trade Mark?

A registered trade mark is a mark which is applied, examined in accordance to the Trade Marks Act, approved and registered through IP Australia. The owner of a registered trade mark will have exclusive rights and protection under the Trade Marks Act to use the mark for the goods and services it has been registered for. An owner of a registered trade mark can use the ® symbol.

An unregistered trademark or a “common law trademark” is a sign that distinguishes a business from its competitors due to an established reputation or goodwill attached to the mark. An unregistered trade mark is not officially registered with IP Australia and will often use the ™ symbol.

Unlike a registered trade mark, the owner of an unregistered trade mark will have enforceable rights under common law. For example, if there is unauthorised use of the trade mark, the owner may have a claim of Passing Off.

The level of protection for unregistered trade marks is limited and enforcing these rights can be difficult. This is due to the level of evidence required to prove ownership and the need to also prove that a reputation has been established. It is significantly easier to establish and enforce your rights if the trade mark is registered.

What are the Benefits of Registering a Trade Mark?

Registering a trade mark is investing in the protection of your brand and a way to prevent your competitors from profiting from your goodwill.
For the owner of a registered trademark the benefits are:

  • Exclusive right to use the trade mark for the goods and/or services specified in the registration
  • Exclusive right to licence the trade mark for the goods and/or services specified in the registration
  • Exclusive right to sell the trade mark
  • The right to take legal action against others who use the trade mark

How Long does a Trade Mark Registration Last?

If you have a trade mark registered, it is initially registered for 10 years from the filing date of the registration application. The trade mark registration can be renewed 12 months before or up to six months after the renewal date for another 10 years. A trade mark can be indefinitely registered if it is continuously used and renewed every 10 years.

What are the Classes of Goods and Services for Trade Marks?

When you register a trade mark, the application must include a list of the goods and/or services which the mark will be used on. There are 45 different classes of goods and services an applicant must choose from. For example, Class 15 is for musical instruments and Class 38 is for telecommunication services.

There must be careful consideration of the goods and/or services your mark is to be protected for. This is because the list cannot be corrected or expanded once an application has been submitted. Unfortunately, you cannot simply list all 45 classes or apply too widely. The reason for this is that an application for a trade mark implies that you are currently using or intend to use the trade mark for the classes of goods and/or services listed. If you are not using or intend to use the trade mark for a good and/or service, a non-use application may be made against you.

Deciding on the classes is not always a straightforward task. It is important to get the list right from the start. An experienced trademark lawyer can ensure you are listing the appropriate classes to help protect your brand. If your trade mark application does not list a class which is used, or intended to be used by your trade mark, your brand may be vulnerable.

How much does it cost to register a Trade Mark?

The cost to register a trade mark will depend on the method you use (online, by post or using an IP professional) to apply for the registration, and the number of classes of goods and/or service you list on the application. The fees are charged per class.

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