Trade Mark Process

Trade Marks
Australian Trade Marks
Trade Mark License
Use It or Lose It
International Trade Marks
Passing Off

  

Trade Marks

What is a trade mark?

A trade mark is used to distinguish a person’s or company’s goods and services in the course of trade from other person’s or companies goods or services.

A trade mark can be one or a combination of a word, letter, phrase, number, logo or image.

Did you also know that a sound, smell or movement can be trade marked !

Here are some examples of trade marks:

Type	Trade Mark	Owner
Word	Apple	Apple Inc. (USA)
Letter	I & J	Irvin and Johnson International Proprietary Limited (S.Africa)
Phrase	“there’s an app for that”	Apple Inc. (USA)
Number	NO. 5	Chanel Limited (UK)
Logo		Google Inc. (USA)
Image		Paramount Pictures Corporation (USA)
Sound	‘O’, ‘O’, ‘O’, ‘O’BRIEN’	O’Brien Glass Industries Limited
Movement	MM’s character	Mars Australia Pty Ltd

 

Why Register A Trade Mark?

Most people use their company or business name to promote their goods or services to the public.

However, did you know you do not own your company or business name? It is merely a ‘number plate’ to identify your registered business or company name.

Any person can register a similar business or company name, for example ‘Johns Donuts’ or Johns Donuts Australia’ or ‘Johns Big Donuts’ or ‘Donuts by John’.

With a registered trade mark, you could stop anyone using the words ‘Johns Donuts’ to promote donuts. You could also go further and demand that they change their business name or company name to not include the words ‘Johns Donuts’.

By registering your trade mark you obtain these important benefits and edge over your competitors:

• Exclusive right to use the trade mark in Australia;
• Allow (‘licence’) others to use your trade mark;
• You personally own the trade mark as your own personal property;
• You can sell or even mortgage you trade mark;
• Your trade mark is protected throughout Australia;
• You can advise the Australian Customs Office to stop the importation of goods that infringe your trade mark.
• You can stop other people infringing your trade mark by using a trade mark that is substantially identical or deceptively similar to your trade mark.

 

What If I Don’t Register My Trade Mark?

You don’t have to register your trade mark.

You can claim what’s called a ‘common law right’ to claim a right in your trade mark but in the case of a dispute you will need to prove you have a reputation in trade mark and prior use of the trade mark which can be complicated and expensive.

You could also rely on legislation such as the Competition and Consumer Act 2010.

Registering your trade mark would over come the stress and expense of proving your right to the trade mark.

 

Examples of how unregistered trade marks can lead to dispute:

• One Direction legal row over name
• Will the real Joe Black please stand up?
• When “big law” turns to bullying
• The UGG Trade Mark Dispute is a famous example of how trade mark disputes can get Ugg-ly!

Is it not worth spending $475 to gain that piece of mind that you will own your trade mark, by adding value to your product’s and services which will secure your trade mark as a valuable asset?

 

The ® Symbol

Most registered trade mark owners place the ® symbol next to their trade mark to signify it is a registered trade mark.

It is an offence to use the ® symbol for unregistered trade marks.

 

The ^TM Symbol

Whilst your trade mark is not registered or pending registration it is good practice to place the ^TM symbol next to your trade mark to signify your claim as a trade mark.

 

Australian Trade Marks

Legislation

In Australia trade marks are regulated by the Trade Marks Act 1995, administered by IP Australia, a department of the Australian Government.

 

Searches

Once we receive your trade mark application we search the Australia Trade Mark register to ensure no other person has an interest in the same or similar names as your trade mark which could have an adverse claim on your Australian trade mark.

We recommend you also search the following registers to ensure no other person has an interest in the same or similar names as your trade mark:

• Domain Search
• Company Index Search
• Business Names Search
• Google Search

Once we have completed our search of the Australia Trade Mark register we will advise you if we consider whether or not your trade mark application will be approved by IP Australia or whether there are prior pending/registered trade marks which could affect your ability to register your trade mark.

It’s no use applying for a trade mark and risking your future goodwill on a trade mark that you cannot register or that is open to opposition by IP Australia or from a pending/registered trade mark owner.

 

Trade Mark Classes

Once we have completed our search of the trade mark register and we have advised that you can proceed with your trade mark application we will then advise you in which trade mark class you should register your trade mark.

The trade mark register is divided into 45 Trade Mark Goods & Services Classes.

We may suggest that you file an application in more than one class. For example is registered in class 30 for “Iced confections” and in class 32 for “beverages”.

Our legal fee to register your trade mark in additional classes is only $275 per class plus GST.

 

Trade Mark Application

Once we have selected the class(es) in which your trade mark application should be registered we will prepare and file your trade mark application with IP Australia.

 

Examination

After your trade mark application is filed with IP Australia it will be examined by a trade mark examiner. Generally the examiner will report within 3 to 4 months as to whether your trade mark will meet the requirements for registration of a trade mark.

 

Headstart

If you wish an early response to your application we can file what is called a “Headstart” application whereby the trademarks office will notify us within 5 business days of lodgement if your trade mark will meet the requirements for acceptance for registration but this is no guarantee until the trade marks office completes its full examination of your application.

The Headstart filing fee is $200 (part 1 fee) and, once you receive the trade marks office report, if you wish to continue with the application you pay a further part 2 fee of $130 (payable within 5 working days) for the application to be converted to a standard application which will be fully examined in the usual 2-3 months examination process.

For the Headstart application you must use the trade marks office “pick list” to describe your trade mark goods or services.

 

Acceptance

If your trade mark application meets the requirements for registration of a trade mark it will be accepted for registration.

 

Examiners Objections

If the examiner considers your trade mark does not meet the requirements for registration of a trade mark you will have an opportunity to submit further evidence to the examiner in support of your trade mark application.

Examples of why your trade mark would not meet the requirements include:

• The trade mark contains words or phases commonly used by traders in your market;
• The trade mark is identical or closely resembles an existing application or registered trade mark;
• The trade mark is phonetically similar to an existing application or registered trade mark;
• The goods or services of your trade mark are similar to an existing application or registered trade mark.

Further evidence you can submit to overcome the examiners objections includes:

• Prior use of your trade mark;
• Sales figures of the goods or services relating to your trade mark;
• Examples of the use of your trade mark, for example promotional material, advertisements etc.

You are allowed up to 15 months from the examiners first report to satisfy any objections. If necessary, you can apply for extensions of time up to 21 months on payment of an extension fees.

If your trade mark application is not accepted within the specified time and extensions, the application will lapse automatically.

 

Advertising

After your trade mark passes the examination stage it will be advertised in the Australian Official Journal of Trade Marks.

 

Oppositions

Within a period of two (2) months after your trade mark application is advertised in the Australian Official Journal of Trade Marks anyone can oppose the registration of your trade mark application. You will have the opportunity to answer the opposition claims.

Examples of grounds for opposition to the registration of a trade mark include:

• The applicant is not the owner of the trade mark
• The applicant is not intending to use the trade mark
• The trade mark is similar to a trade mark that has acquired a reputation in Australia
• The trade mark contains or consists of a false geographical indication
• The trade mark contains certain prohibited signs
• The trade mark does not distinguish the applicants goods or services
• The trade mark is scandalous or its use is contrary to law
• The trade mark is inherently likely to deceive or cause confusion
• The trade mark is identical with another trade mark
• The trade mark is identical with a trade mark protected under the Madrid Protocol
• The opponent has earlier use of the same or similar trade mark
• The trade mark application is made in bad faith

An example of an opposition is the UGG Trade Mark Dispute.

 

Registration

Once the two (2) months advertising period has lapsed and no oppositions have been lodged or you have dealt with any oppositions to the satisfaction of IP Australia, your trade mark will be registered.

The registration period is 10 years and will commence from the date the trade mark application was filed with IP Australia.

 

Renewal of Trade Mark

Prior to the expiry of the initial 10 year registration period IP Australia will send you a renewal notice which will advise you of the time in which you have to renew your trade mark and the applicable renewal fee.

 

Address for Service

You should ensure any change of your address for service of notices is notified to IP Australia as all notices relating to your trade mark will be sent to the latest address notified to IP Australia.

Yes, if we can’t register your Australian trade mark we will refund our legal fees, except:

• If we advise you that we believe your trade mark application will be rejected by IP Australia or may be opposed by someone else and you still wish to proceed with your application; or
• If you fail to provide us with such information required by us to make further submissions to IP Australia in support of your application, including but not limited to evidence of your prior use of the trade mark, sales data and samples of promotional material of your trade mark.
• The Gov’t Application Fee is not refundable.
  
  

 

Trade Mark Licence

Once you have registered your trade mark you can allow others (called ‘licence’) to use your registered trade mark under the conditions you set. This is generally known as a ‘trade mark licence’.

For example, the trade mark is licensed to Virgin Mobile, Virgin Money, Virgin Wines, Virgin Radio and Virgin Trains.

We can assist with any trade mark licensing matters.

 

Use it or Lose It

If you do not use your registered trade mark in the course of trade it can be removed from the Trade Marks Register. The main reason is to stop people registering trade marks that their competitors might want to use in the future.

The non-use application is filed with IP Australia with the relevant fee. The notice of the non-use application is advertised by IP Australia and a copy is served on the registered trade mark owner.

The registered trade mark owner has 3 months from the date of the advertising of the non-use application to oppose the removal.

International Trade Marks

Myth

There is no such thing as a worldwide registered trade mark.

 

Options

You have two options for registering your international trade mark:

1. A separate trade mark application is made in each country you wish to protect your trade mark; or
2. A single application is made, under the Madrid Protocol, nominating the member countries in which you wish to protect your trade mark

 

Madrid Protocol

The Madrid Protocol was established by an international treaty to facilitate the registration of trade marks internationally.

The Madrid Protocol is governed by the World Intellectual Property Organization (WIPO) in Geneva, an agency of the United Nations.

Nationals of member countries may file a trade mark application with their member country’s Trade Mark Office for an international trademark in one or more of the member countries of the Madrid Protocol.

 

Priority

Normally before you consider filing a trade mark application in another country you should file your trade mark application in Australia.

Once you have lodged your Australian trade mark application & you proceed with your international application within 6 months, under the Madrid Protocol, your trade mark application will take priority in the designated country from the date you filed your Australian trade mark application with IP Australia.

 

Steps

Generally the same steps are carried out for an International trade mark application as when applying for registration of a trade mark in Australia.

 

Passing Off

Once your trade mark is registered it is easier to protect your goods and services from other persons passing off their goods or services as being yours.

Yes, you can rely on a ‘common law right’ to claim a right in your trade mark but in case of a dispute you will need to prove you have a reputation in your trade mark and prior use of the trade mark which can be complicated and expensive. With a registered trade mark you don’t need to prove reputation or prior use as you own the trade mark.

We can assist you with any Passing Off claim.