1st November 2019 - Jax Floro

Although you are keen to start your new business, at the outset you should start the process to register a trade mark to protect your brand name. With the expansion of the Internet and global commerce, trade marks have taken on a highly valuable significance.

Trade marks are registered in respect of specified goods or services which are classified into 45 classes for the purpose of registration. The cost of the application depends on the number of classes that are filed.

Yes, you have registered your business name but that is not the same as registering a trade mark. Only a trade mark can give you proprietary rights to the brand name. Consider if another uses the name of your business or alleges trade mark infringement against you!

A registered trade mark gives you a valuable defence to allegations of trade mark infringement and also gives you the right to prevent others from using a substantially identical or deceptively similar trade mark to that of the name of your business.

And what is more, it doesn’t take years for you to register your trademark. Provided there are no barriers to acceptance of your trade mark, it will take a minimum of 7 and a half months to register a trade mark in Australia.

Why is it important to register your trade mark?

Trade mark registration is the most successful and practical way of protecting your brand name.

Specifically, you or the legal owner of the trade mark, will have the exclusive right to use your mark in Australia for the claimed products or services. The moment your trade mark is registered, you will have the exclusive right to use the brand name throughout Australia.

Your trade mark will be protected for an initial period of ten years and you can proceed against anybody who infringes your trade mark.

Before filing your trade mark

Before you start your trade mark application, you should ascertain whether your trade mark is registrable.

A trade mark can be a particular feature or a combination of features such as a letter, word, phrase signature, color, sound, movement or scent. Search the web for trade marks that are similar to yours and also search the trade marks register for trade marks that are the same or similar to yours for the same products or services and have an earlier filing date.

Consult a trade mark attorney or expert as to the process for filing a Headstart application at IP Australia. 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 Trade Marks Office. Within 5 to 7 business days, the Trade Marks Office will contact us and you will know the results. If that is the case, we will come back to you with some options if a negative response is received

Filing requirements

You will need to provide your contact details, representation of the trade mark, a description of the goods and services that are consistent with your trade mark, list of the classes you are applying for, translations of your trade mark or parts of your trademark in another language, and confirmation that the application fee was paid.

General procedure for trade mark registration

It can take four to six months for IP Australia to examine your application after it is submitted. Your application will either be accepted or cited with an “adverse report”. If there are issues with your application, the Trade Marks Office will send you a report and you will have to consider your options as to how to respond to any problems raised in that report.

If there are no issues or you overcome the issues raised by IP Australia, then your trade mark will be accepted and published online in the Australian Official Journal of Trade Marks. This, in turn, will start a two-month opposition period, where anyone can start opposition proceedings against your trade mark.

Assuming there are no oppositions then your trade mark in due course will be officially registered and protected in Australia for a period of 10 years.

How long does it take to register a trade mark?

It takes about seven and a half months to proceed to trade mark registration. There is no way to speed up the process once your application is with IP Australia. There are ways, however, to shorten the time of the initial examination by IP Australia. 

The usual three months can be reduced to about only five to seven days when you request a pre-filing assessment for the purpose of ‘testing the waters’ through a Headstart application. This is known  as a “pre-application” fast track service to assess your trade mark application before you publicly file to register your trade mark.

Take away points:

• In order to be registrable, a trade mark must identify particular goods or services as originating from a particular entity or business.
• File a Headstart application for a quick initial assessment of the registrability of your trade mark.
• It takes a minimum of seven and a half months to register your trade mark from the date that the trade mark application is filed.
• Statutory rights are obtained by registration of a trade mark. Trade mark registration provides several advantages including that proprietary rights can be obtained early without having to use the trade mark and evidence of use or reputation is not required to enforce your trade mark.
• Registration is a defence to an action for infringement.

 

Jaclyn-Mae Floro, BCompSc

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.au.
Disclaimer. The material in this post represents general information only and should not be taken to be legal advice.