A trade mark is defined under the Trade Marks Act and is essentially a ‘sign’ that distinguishes your goods or services from those of your competitors. Registering a trade mark gives you exclusive rights to use, license or sell that mark. It could be a logo, word, phrase, letter, number, or a sound, as well as numerous other things. It could even be a combination of multiple of these. It’s important to ensure that what you are registering is in fact a trade mark and not another form of intellectual property such as a design.
How do I register my trade mark ?
You can make an application for a trade mark through IP Australia. This application can be made online and there are three different methods available for applying based on your specific needs, each of which attract different fees.
You will be required to include the ownership details, a representation of the trade mark, a description of the goods/services your mark will apply to as well as providing all classes to which the trade mark will be used. The application will only take a short amount of time if you have prepared all this required information in advance. A legal professional can guide you through the trade mark application process if required, this will help in ensuring that your application is accepted in the first instance, as making mistakes can be costly and can potentially require you to make another application.
Goods and services are divided into 45 difference classes. The classes are different goods or services you will be applying your trade mark on. It is important that you cover all classes you will be covering in your application as you will not be able to change the list once it has been filed.
It is also essential that you conduct searches to ensure that there are no similar trade marks pending or registered, or your application will be rejected. IP Australia offers an Australian trade mark search tool, however the process of searching can be difficult. It may be necessary to seek assistance from a legal professional to ensure that there are no similar trade marks in place, otherwise the process could prove costly as refunds are not provided.
What is the registration process?
Full registration of a trade mark is expected to take at least 7 months. Once an application is submitted it will first go through an examination process to ensure it meets requirements and contains correct information. If you do not meet the requirements under this step you will be sent an examination report outlining reasoning and possible ways to overcome the issues. If your application meets all the requirements, it will be advertised in the Australian Official Journal of Trade Marks for two months, during which time other parties may oppose it. Provided that it is not opposed by any third party, it will be registered, and you will be notified in writing.
What happens if I don’t register my trade mark?
It is not a legal requirement that you register any unique marks to your business. However, if another party uses your marks it can be a much more costly and difficult process to prevent them from doing so.
What to do if you believe your trade mark is being infringed?
There are a number of considerations to make when determining whether your trade mark is being breached. The trade mark must be being used on the same or similar goods/services as to which you registered your trade mark. Trade marks do not have to be identical to be infringed, for example a trade mark that is likely to cause confusion with yours may be in breach, or one that has a similar name that isn’t distinguished from yours. It is best to seek legal advice if you believe that a business may be infringing your trade mark.
How are trade marks enforced?
IP Australia grants trade marks and their exclusive use, however they do not enforce them. It is therefore up to you to protect your trade marks. It is recommended that you seek professional legal advice if you believe your trade mark is being infringed upon to prevent the unauthorised use. You may also be able to claim damages from the other party.
Overall, your trade mark is an asset to your business, and you will be in a much stronger position legally if you register your trade marks with IP Australia. Obtaining professional legal advice will ensure your trade mark is adequately protected and mitigate the risk of making mistakes in your application which could be prove costly.