Trade Marks

What is a trade mark and what does it protect?

Although you may not realise it, you may have been using a trade mark for many years. A trade mark is a sign intended for use to distinguish your goods or services from the goods or services of another person. A sign could include a letter, word, name, brand logo, aspect of packaging, shape, colour, sound, smell or a combination of these.

There are certain requirements needed before a trade mark can be formally registered with the Trade Mark Office. A trade mark is not registrable if it is not capable of distinguishing your goods or services from others in the marketplace.

Why do I need a registered trade mark?

A registered trade mark grants you a statutory monopoly to use your mark and provides you with a means to take action against others using a substantially identical or deceptively similar mark in respect of similar goods and services. Whilst a trade mark can be more difficult to register than a business name, a trade mark confers proprietary rights whereas a business name does not.

When should I apply for registration of my trade mark?

In Australia, you can make an application to register a trade mark at any time, either before or after you have started using the mark. A single application for a registered trade mark can be made in relation to goods or services which are grouped into different classes.

However, some overseas countries have a first to file system, where the person who first applies for a trade mark is entitled to have it registered. Even though you may be using your trade mark overseas, another person may apply to have the trade mark registered in that country. Making an overseas trade mark application within 6 months of an Australian trade mark application provides priority which will give you the best prospect of protection.

Furthermore, a registered trade mark provides a defence against infringement. Re-branding can be costly and being forced to re-brand because you are infringing another trade mark can severely damage a business. Having a registered trade mark gives security and knowledge that you are not treading on the toes of anyone else and provides a stronger position for enforcement against others who infringe your own mark.

What are the steps in obtaining a registered trade mark?

An application is filed bearing the mark and the goods and / or services to which the mark applies, following the application there is typically a delay of about 3 months before the application is processed by the Trade Mark Office. Given this delay and the attendant uncertainty, it is desirable to firstly conduct a search of the Trade Mark Register to see if the trade mark is free for your use and registration.

When your application is processed by the Trade Mark Office, it will be examined for registrability. The Examiner will search and report if there are any similar trade marks currently on the Australian Trade Mark Register. If objections are raised it will be necessary to respond with argument/amendment to persuade the Examiner your trade mark is distinctive. Once a trade mark is registered it can remain in force indefinitely, subject to payment of renewal fees every 10 years.

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