Trade Marking is the process of creating an identifying aspect of a product or service that distinguishes it from other similar products or services within the marketplace. A trade mark may include a word, phrase, letter, sound, number, shape, smell, logo, picture or aspect of packaging or a combination of these.
Upon Registration the trade mark covers all areas of Australia. It gives the registered owner the legal right to use the name, logo and picture, for the goods and services under which it is registered.
While you are not required to register your trade mark, it is prudent to do so as common law action may arise if you use a trade mark that is not registered.
Why would you trade mark?
A trade mark is commercially recognised as being a vital element in developing and maintaining a brand and viability of a business. The development of a recognised trade mark is an integral part of an effective marketing strategy for goods or services and a business in general.
A recognised trade mark quickly becomes an identifying element for a customer base. Trade marking becomes pivotal in building your goodwill and reputation, and will ultimately contribute to the overall success of a business.
Is your mark registrable?
In order to register a trade mark it needs to meet the requirements of the Trade Marks Act 1995 (Cth). The applicant must have legal personality and is to be classified as either:
- an individual;
- Company;
- Incorporated association; or
- a combination of these.
Trade Mark needs to be distinctive in nature
Your trade mark needs to be distinctive in nature and is not something that is used in the everyday vernacular. The name cannot be descriptive in nature and can not impose any connotations that would be perceived to be unfair or unequitable to others operating within the marketplace.
In terms of registering the name, it is important to ensure that you do not have a combination of commonly used initials or surnames. There is also to be no confusion between other goods or services currently within the marketplace. Provided that you comply with the above requirements, there is a higher chance of successfully achieving registration.
Trade Mark needs to not be used in normal course of trade
The trade mark needs to be a new addition to the market place, in order to avoid confusion. It is crucial to ensure that customers are not confused between trade marks as the repercussions of this could be potential legal action.
It is prudent to conduct a search for any registered or pending trade marks which may already be in existence. It may be possible for similar trade marks to co-exist and be registered provided that the goods and services offered are in different classes or classifications.
Identification of trade mark classes
Trade marks are divided into groups of goods or services, these two categories are then divided into a further 45 classes. The classes can be located at the link below:
https://www.ipaustralia.gov.au/trade-marks/applying-for-a-trade-mark/classes-goods-and-services
It is crucial that you clearly outline a clear, concise description of your services which you wish to trade mark.
Does a trade mark expire?
The registration of a trade mark lasts for 10 years. Upon expiry you may renew your registration for an addition 10 years and pay the prescribed fee. There is significant business value that can be placed upon registration and renewal of trade marking and ultimately the decision to obtain a trade mark will need to commercially assessed on an individual basis.
The Trade Mark Application process
Applications for trade marks are to be filed with the Trade Marks Office of Intellectual Property Australia.
Upon submitting your trade mark for application you will be allocated a filing number which enables you to easily track your application. Should your trade mark be accepted for registration, the details pertaining to your application will need to be advertised in the official Journal of Trade Marks.
From this point onwards anyone may lodge an objection to your trade mark application within three months of the advertisement date. If no objection is lodged against your trade mark application, your trade mark becomes registrable upon payment of the registration fee.
You will then be required to pay the registration fee no later than 6 months from the date the acceptance is advertised.
Upon registration IP Australia will issue you with a Certificate of Registration and record the details pertaining to your trade mark in the Register of Trade Marks.
Time frame of the application process
The estimated time frame for a trade mark application is approximately 5 months if no issues arise during the
application. Upon being granted a trade mark your rights will accrue from the date of filing the application rather than the date you are notified of successfully obtaining the trade mark.
Trade marking a Logo (colours)
Trade mark may be registered:
- with limitations as to colour;
- with limitations in respect to whole or part of the trade mark; or
- in the capacity that the trade mark is registered without any limitations as to colour.
However, if your trade mark is registered without colour limitations, your trade mark is taken to be registered to cover all colours.
For more information on trade marking and other areas of intellectual property law, please contact our Intellectual Property experts.
