A Trade Mark is a sign used or intended to be used to distinguish the goods or services you sell and promote from those goods or services sold or promoted by your competitors.
Under Australian law a Trade Mark can be registered with IP Australia (the government authority responsible for the administration of laws relating to Intellectual Property).
What can be registered?
A very broad range of signs are capable of being registered as Trade Marks including letters, words, names, signatures, numerals, logos, brands, headings, labels or tickets, aspects of packaging, shapes, colours, sounds and scents. This is a non-exhaustive list of the things that may be registered as a Trade Mark.
What cannot be registered?
Some signs cannot be registered as Trade Marks. For example, it will be very difficult to obtain registration of a Trade Mark which consists of or contains:
- words that are descriptive of your goods and services or the qualities and features of your goods and services;
- words which praise your goods and services or the features and qualities of your goods and services such as best or excellence;
- a well known place name such as London or Sydney; or
- generic words used throughout a particular industry, for example the word Laundromat in relation to a laundry containing coin-operated washing machines.
It can also be difficult to obtain Trade Mark registration of a sign which is too similar to an already registered Trade Mark.
Benefits of registration
Broadly speaking, once your Trade Mark has been registered, you will obtain an Australia-wide monopoly for use of your Trade Mark in respect of the goods or services for which registration was granted.
You will also have a legally enforceable right to prevent others from using a Trade Mark which is similar or identical to your Trade Mark to promote goods or services similar to those goods and services in respect of which your Trade Mark is registered.
You will not obtain these rights if you use your Trade Mark as a business name, domain name, or company name without also registering it as a Trade Mark.
Application Process
Practically speaking, applying for registration of a Trade Mark will involve:
- undertaking detailed research into the availability of your Trade Mark, including searches of the relevant Trade Mark databases and advising you on the results of our research; providing advice on the classes of goods and services we recommend you seek registration in;
- drafting an application for Trade Mark registration and a precise specification of the goods and services claimed by your application;
- filing the application with IP Australia; and
- liaising with IP Australia and dealing with any objections IP Australia may have to the registration of the Trade Mark.
TM Headstart Application
You can apply for registration of a Trade Mark via a process called TM Headstart. The benefit of this method is that you receive early feedback (within five days) with respect to any likely basis for rejection of your application. You pay half the application fees at first instance and then if the results are positive and you wish to proceed with formalising the application, the second half of the application fees are payable . In the event that the results are adverse and you do not wish to continue, there is no obligation to pay the second instalment however, your initial fees are non-refundable.
Classes of Goods and Services
For the purposes of registering a Trade Mark, all goods and services are categorised into classes. The owner of a registered Trade Mark obtains exclusive rights to use that Trade Mark in relation to:
(a) the goods and services in which the Trade Mark is registered; and
(b) goods and services similar to those in which the Trade Mark is registered.
Time Frames
Once a Trade Mark application has been filed it will generally take 7-8 months for the application to be finalised and a certificate of Trade Mark registration issued. Registration can be significantly delayed if an application encounters objections from IP Australia or opposition from third parties.
Costs
The costs of applying for Trade Mark registration can vary significantly depending on factors such as the complexity of your Trade Mark, the number of classes of goods and services in which you need to apply for Trade Mark registration and the possibility that the application may encounter objections or oppositions.
If you are considering registering a Trade Mark please contact us to discuss your matter and to obtain a guide as to the costs associated with the process.
Important Disclaimer
The information set out above is in the nature of general comment only, and it is not intended nor does it purport to be advice neither on any particular matter nor to any particular person. Readers should not act or rely upon any matter or information contained in or implied by this publication without taking appropriate legal, accounting and financial advice which relates specifically to their particular circumstances. Sajen Legal expressly disclaims all and any liability to any person whether a client of Sajen Legal or not, who acts or fails to act as a consequence of or in reliance upon the whole or any part of this information.
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