When starting a business many people simply register a business name and domain but fail to realise that this does not grant them the exclusive use of that name in Australia or protect any design they use in their business.
To obtain such protection you must register a trade mark with IP Australia. The four steps to registering a trade mark are:
- Conduct preliminary research and choose your trade mark
- Structure ownership and use of your trade mark
- Determine which class of goods and services apply to your trade mark
- Apply to register your trade mark
1. Conduct preliminary research, choose and design your trade mark
It is vital from the outset that you ensure the name or logo is chosen with a view to trade marking it. Often we find that businesses within an industry tend to use common names, descriptive words or identifiers which by themselves can adversely affect the ability of the business to trade mark its intellectual property. In deciding on a business name and logo we recommend that you:
- engage in preliminary research and conduct Google searches on similar businesses;
- Whois domain name searches to identify available urls; and
- Australian trade mark database searches,
- avoid using where possible common names used for the products or services you sell;
- descriptive words and phrases by themselves;
- geographical names;
- words which sound similar to another business;
- logos which are similar to other businesses;
- common phrases, acronyms, single letters, and numerals;
- common surnames;
- liaise with both your logo designers (if applicable) and lawyers to ensure that the logo and name you choose is unique and capable of distinguishing itself from your competitors.
Rostron Carlyle Rojas Lawyers can assist you in this process by advising you on the likelihood of potential names and logos being registered as a trade mark and whether there are any potential conflicting trade marks or issues.
2. Structure ownership and use of your trade mark
Just as important as choosing the right name and logo is structuring the ownership and use of your trade mark. Unless the person or entity named in the trade mark application as the owner is the entity which will ultimately use the trade mark, it is important to ensure that documentation is put in place providing the user with a legal right of use.
Recent case law[1] has resulted in a trade mark owned by a director of a company being successfully opposed on the basis that whilst the trade mark was used by the company, the director as the owner did not use the trade mark. Importantly in that case there was no written licence agreement between the director and the company by which the company had a legal right of use of the trade mark, or even evidence of an intention on behalf of the director to enter into such an arrangement.
Rostron Carlyle Rojas generally advises having a trade mark and other valuable intellectual property owned by a separate holding company which then licenses that intellectual property for use by your trading entity or third parties, and is experienced in establishing and documenting such arrangements.
3. Determine which class of goods and services apply to your trade mark
The next step is to determine which class of goods or services apply to your trade mark. IP Australia uses a classification system which categorises goods and services into 45 different classes and it is important to note:
- you must actually use or intend to use the trade mark in relation to the goods and services you specify;
- IP Australia bases its fees on the number of classes claimed and these fees increase with every class you add;
- whilst a wide description of the goods and services offers greater protection a wide description also increases the risks of the trade mark conflicting with pre-existing trade marks or being challenged on the basis of non-use;
- whilst it is possible to narrow the description of the class of goods and services after a trade mark is registered it is not possible to widen that description; and
- careful drafting of the description of the class of goods and services can avoid potential conflicts with other trade marks, costly objections by third parties and increase the likelihood of a trade mark being registered.
4. Apply to Register Your Trade Mark
Once the above steps are completed the application for the trade mark can be lodged with IP Australia. Generally, your trade mark application will be examined within 3-4 months after which IP Australia will either issue an acceptance notice or an adverse report. If accepted, the trade mark will be advertised to allow third parties to view the trade mark application and make objections. If there are no objections the trade mark will be registered at the earliest 7 ½ months after the application for the trade mark was lodged. It is possible that during the application process IP Australia may issue an adverse report or a third party may oppose the trade mark application. In both cases it is important that professional advice is obtained to determine your options and to ensure that the relevant deadlines are met in a timely fashion.
Rostron Carlyle Rojas Lawyers have successfully dealt with many issues that have arisen during the trade mark application process and can advise you of your options going forward.
If you need advice or assistance in respect of trade marking or protecting your intellectual property please contact us.
[1] Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83.
