Road Map to Trade Marking

trade mark

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:

http://xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml

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.

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4 steps to applying for a trade mark

Intellectual Property Lawyers

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.