What is a trade mark?
A trade mark (commonly referred to as a ‘trademark’) can be one, or a combination of, the following:
1. a business name
2. a product name
3. a sub-brand
4. a distinctive catch phrase
5. a logo, picture or symbol
6. a colour, word, letter, number or sound
7. a distinctive product shape
8. an aspect of packaging
9. a scent
Trade marks are used by businesses to distinguish their goods and services from those of competitors. A registered trade mark provides you with exclusive government granted rights to your brand, Australia-wide.
What can be trade marked?
A trade mark must meet the requirements of the Trade Marks Act 1995. The main points of the Act are that your trade mark needs to be:
- not similar to any prior filed trade mark applications or registrations: the mark must not be substantially identical or deceptively similar to any other registered trade mark (there are some exceptions to this); and
- not descriptive in relation to the business activities to be covered by your application: something that other traders don’t need to use in the normal course of their trade (e.g. geographical names, common surnames and trade expressions)
The Trade Marks Office of IP Australia is responsible for reviewing all Australian trade mark applications.
Why should I register a trade mark?
Trade mark registration is the most effective way to protect your business’ brands and marketplace reputation. Misuse of the same or similar brand names could see your company’s reputation damaged, or your competitors benefit from the goodwill you established with customers under your own trade mark. While trade mark registration is not compulsory, it is recommended. It prevents other traders who offer similar products and services from adopting an identical or similar brand name anywhere in Australia. If you do not register your trade mark and a competitor uses a similar or identical mark, you will have to demonstrate the level of your reputation in your brand in order to protect your rights. This can be difficult and expensive to establish in court. Even then, your reputation may be limited to the geographical area where you trade and may not protect you against infringement elsewhere. Registering your trade mark gives you automatic protection Australia-wide, without the need to establish reputation in the event of infringement.
How do I register a trade mark in Australia?
Once you have completed a successful trade mark search, the next step in the trade mark registration process is to lodge an application with the Trade Marks Office of IP Australia. Actuate IP’s trade mark attorneys and trade mark lawyers work with you to understand the current and intended business activities to be carried out under the proposed trade mark name. This information is critical when drafting appropriate specifications, as these will dictate the boundaries of the trade mark’s protection. IP Australia then examines the application in accordance with the Trade Marks Act 1995 and Trade Marks Regulations 1995. If any issues arise, IP Australia issues a report and Actuate IP will present submissions or amendments on your behalf to overcome these issues. Examination can take anywhere between three and six months, although you can seek an expedited examination. If IP Australia raises no objections, the application then proceeds to acceptance. An accepted application is published in the Official Journal of Trade Marks, at which point it is open to a two month opposition period. Following the opposition period, the required government registration fees can be paid and the trade mark is officially registered. The overall process from filing to registration generally takes seven to nine months. A trade mark registration can be maintained indefinitely, so long as renewal fees are paid every 10 years.
How do I register a trade mark internationally?
An Australian trade mark registration provides protection only in Australia. To protect your trade marks overseas, you will need to register your trade mark in each country of interest. There are three possible methods, and Actuate IP’s extensive international network of associates can assist. See our filing trade marks overseas page for more details.
HOW CAN ACTUATE IP ASSIST?
Actuate IP’s qualified trade mark attorneys provide an expert and tailored approach to assisting with the implementation of trade mark strategies and trade mark protection for businesses. We work with a close network of overseas trade mark attorneys in all key jurisdictions meaning we can assist you with any international trade mark protection in an efficient way with a clear focus on achieving the right outcome.