The advantage of registering a trade mark is that it confers far more benefits than registering a business name, company name or domain name. Marketing is an important business tool, and a registered trade mark is crucial in allowing you to protect any value or credibility which you have built on your brand.
What is a trade mark?
A trade mark identifies a product or service, distinguishing it from the goods or services of other traders. A registered trade mark protects any branding element within a business including letters, numbers, words, phrases, sounds, smells, shapes, logos, pictures and aspects of packaging. Registration of a business, company or domain name does not give you that kind of protection.
Registered trade marks are enforceable and a trade mark owner can commence legal action to stop others trading with it. Trade marks can be used to help build market position and stop others from imitating your brand.
The registration of a trade mark is effective for 10 years and can be renewed for further 10 year periods provided renewal fees are paid.
Registration of a trade mark usually covers the entire Commonwealth of Australia. For worldwide protection, an application can be filed with each country in which the trade mark will be used, or a single international application can be filed through IP Australia nominating the countries in which protection is required.
Applying for a trade mark
Trade marks are registered in specific classes relevant to the description of the goods or services for which the mark will protect. The application for registration must nominate one or more classes of goods or services for which the mark is intended to be used and associated. The more classes selected, the wider the protection that will be given once the trade mark is registered.
Before making an application to register your trade mark, the following should be considered:
- Identify the relevant class of goods or services for which the mark will apply. Schedule 1 of the Trade Marks Regulations 1995 prescribes the available classes and describes the types of goods or services specific to each class.
- A search should be carried out before applying to register a trade mark to check that a similar trade mark is not already registered in that class. An application to register your trade mark could be rejected if there is an identical or similar trade mark already registered which covers similar goods or services.
- Only minor changes can be made to a trade mark once an application has been filed and published.
- A trade mark registration is for the goods and services you actually trade in or intend to trade in in the near future. Once an application is filed and registered, goods and services cannot be added. Therefore, you should clearly define the marketplace you trade in to ensure the best possible protection.
- Your trade mark must be something that is capable of distinguishing your goods and services – exclusive rights will not be granted to everyday language, names and descriptions of products and services are difficult to register.
Once you are happy with your trade mark, you can apply to register it through the IP Australia website. You can also request an assessment of the likelihood of your trade mark achieving registration through TM headstart.
The cost of applying for a trade mark will vary depending on the application method used, and how many classes of goods and services the trade mark is to be registered in (currently, there are 45 different classes of goods and services in Australia).
The application process
Once your trade mark is accepted, it will be advertised in the Australian Official Journal of Trade Marks and the application is open to opposition for a period of 3 months (which can be extended for a further 3 month period).
If your application is not challenged, your trade mark will be registered once the registration fee is paid (which must be paid within 6 months from the date acceptance is advertised).
The registration of a trade mark in Australia takes a minimum of 7 ½ months after an application is filed.
Applying for an Australian trade mark is a straight forward process however it is important to choose the correct category of registration, and any additional categories, for optimum protection.
By investing in protecting your brand today, you can avoid the costly and uncertain exercise of preventing unauthorised use of your unregistered trade mark.