30th October 2023 - Bianca Ysabel

A trade mark protects your brand and distinguishes your product or services from competitors. It is important to understand how a trade mark can protect your business and how to apply for one.

What is a trade mark?

A trade mark which is sometimes called a brand is used to signify that products or services originate from a particular entity or business or are authorized by that entity or business or that the products and services are of a particular quality. A trade mark may be any ‘sign’ capable of distinguishing the goods or services of one trader from those of other traders.

Why register a trade mark?

• It proves you own the trade mark.
• You can legally stop others from using it.
• It’s a good defense if someone else accuses you of infringing their trade mark.
• It deters your competitors from using or registering something similar.
• It tells everyone you take your intellectual property seriously and your brand is worth something.
• You are protected indefinitely.
• You usually get Australia-wide rights.
• It is a valuable asset that you can sell, assign or license.
• You can ask Australian customs to seize goods that have infringing marks on them.
• When your trade mark is registered, you can use the ® symbol next to your trade mark.

What Can You Trademark?

In Australia, a trade mark may be any ‘sign’ capable of distinguishing the goods or services of one trader from those of other traders. The trade mark may be one of or a combination of a word or words, a logo, a picture, a slogan, aspect of packaging, color, shape, sound and even a smell!

Who can Apply?

The applicant must have legal personality. That is, to be an individual, a company, an incorporated club, or association, an incorporated or limited liability partnership or any combination of these entities.

Filing Requirements

The starting point of registering a trade mark is filing the application. The applicant for the trade mark as well claiming to be the owner of the trade mark, must have an intention to use the trade mark through:

• Use or authorized use of the mark
• Intent to use or authorize use of the mark.

Specified Goods and Services

For the purposes of registration, goods and services are classified into 45 classes. An application may nominate goods and services falling into one or more classes. The cost of the application will depend on the number of classes nominated.

Head Start Fast Track Application

To minimise your risk, we can file a fast-track Electronic Trade Mark Application on your behalf to start the process. This will help avoid some cost and uncertainty in your application in that it provides you with an early assessment of the registrability of your trade marks by the Australian Trade Marks Office. After an application has been filed at IP Australia it will be examined by a trade marks examiner.

Within 5 to 7 business days, the Australian Trade Marks Office will contact us, and you will know the results. We will then come back to you with some options if a negative response is received. This may include replacing a trade mark with a new trade mark for an extra government fee for each class depending on the outcome of the examiner’s assessment.

Examination

To be registrable a trade mark must satisfy the following two main requirements:

• The trade mark must be distinctive or at least capable of becoming distinctive and should not be generic or descriptive of the goods or services;
• The trade mark should not be substantially identical or deceptively similar to any earlier trade marks on the register which are pending or registered or otherwise confusingly similar.

Grounds for Rejection

The general scope of the prohibition is as follows:

• Section 39: Prohibited and Prescribed Signs. The central ground for rejection is incorporating signs prohibited by the law.
• Section 40: Graphical representation of a trade mark. The application must rejected if the trade mark cannot be represented graphically.
• Section 41: Trade mark not capable of distinguishing. A trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services.
• Section 42: Trade marks that are scandalous or contrary to law. The Australian Trade Marks Office must evaluate the mark in the context of the ordinary people it might offend in deciding the meris of each case and also must reject a trade mark if it is contrary to legislation.
• Section 43: Trade marks that are like to deceive or cause confusion. A trade mark must be rejected if it has some connotation that would be likely to deceive or cause confusion.
• Section 44: Conflict with other trade marks. There are grounds for rejection a trade mark application if the mark is substantially identical or deceptively similar to another trade mark application or registration in respect of similar or closely related goods or services.

If objections are raised by the trade marks examiner, a period of 15 months is allowed to over objections through, for example, submissions or amending the application or submitting evidence of use. Further extensions of time may be permitted if you pay a fee to the Australian Trade Marks Office.

If there are no objections raised by the trade mark examiner or if you overcome the objections raised, your trade mark will be accepted and advertised in the Official Journal of Trade Marks.

Trade Mark Application Fees

PACKAGE	LEGAL FEE (AUD)	GOVERNMENT FEE (AUD)
HSTM APPLICATION (ONE Trade Mark in ONE class)
Legal Fee	$ 650.00 plus GST	$ 330.00
Additional Classes	$ 300.00 plus GST per class	$ 330.00 per class
Additional Related Trade Marks	$ 300.00 plus GST per mark	$ 330.00 per class
Amendment of Trade Mark (HSTM)	$ 180.00 plus GST	$ 150.00 per class
STANDARD TM APPLICATION (ONE trade mark in ONE class)
Professional Fee	$ 850.00 plus GST	$ 400.00 per class
Additional Classes	$ 300.00 plus GST per class	$ 400.00 per class
Additional Related Trade Marks	$ 300.00 plus GST per mark	$ 400.00 per class

Valid as of 26 October 2023

The Australian Opposition Process

Within two months of advertisement of acceptance by the Australian Trade Marks Office, any person may oppose the registration of your trade mark. An opposition occurs when someone makes a formal objection against the acceptance of your trade mark application.

There are many grounds for an opposition. This typically occurs when someone considers that your trade mark is identical or similar to their registered or pending trademark.

After receiving the notice of opposition, the applicant must submit a notice of Intention to defend within 30 days. An applicant in defending opposition proceedings must collate evidence, documentation, and arguments, and defend their trade mark through the opposition process where each party provides evidence to support their arguments. Either party can request a hearing to resolve the issue and make submissions to support their case. The hearing officer will evaluate the evidence and make a decision.

Renewal

The initial term of registration is 10 years from the date of filing of the trade mark application and thereafter, the registration can be renewed indefinitely for 10 year periods.

Final Thoughts

A trade mark may be your most valuable marketing tool. Australia offers an efficient trade mark registration system and, with the right branding strategy, and through filing a trade mark, you will protect your brand, the name of your product or service and help customers distinguish you from your competitors. Today, particularly with online visibility, it is more important than ever that you allow customers to identify your business as the source of a product or service. With a registered trade mark, you can protect your brand and reputation and people can spot and recognize your unique brand identity in a crowded marketplace.

Our Trademark Lawyers in Sydney are Experts when it comes to Registering Trademark or Trademark Opposition Process in Sydney

Bianca “Bianx” Ysabel, Digital Administrator

Contact W3IP Law on 1300 776 614 or 0451 951 528 for more information about any of our services or get in touch at law@w3iplaw.com.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.