26th September 2019 - Sveth Milanes

An important step for any business is to assess their intellectual property assets. Intellectual property should be included in your business plan including how you plan to protect and manage it.

What is a trade mark?

A trade mark is a right granted for a word, slogan, logo, picture, shape, colour, sound, scent or any combination of these that distinguishes the goods and services of one trader from those of another. A trade mark serves as a badge of origin or a guarantee of quality.

Proprietary rights in a trade mark may be obtained either by use through common law rights or by registration for statutory rights. Statutory rights have several advantages since proprietary rights can be obtained early without having to use the trade mark and evidence of use or reputation is not required in order to enforce a registered trade mark. Common law does provide you with some protection but stopping infringers can be much more difficult and costly than if your trade mark was registered.

Before you start using your trade mark and investing money in your branding and website, you should search for any existing trade marks that are similar to yours to ensure that your mark is available for use to brand your business and to ensure that you do not infringe on the trade mark of another.

So, how do you get a trade mark registered? Here is a simple guide to help you along your way.

Consider what you want to trade mark

Before you start the process to register your trade mark, you need to do some research.

Making mistakes with your application can be costly as your trade mark fees are not refundable. It may be an expensive exercise if you infringe on the trade mark rights of another as you could be liable for damages or an account of profits.

Think about the following before applying for a trade mark:

• Are you registering a word mark that is common? Descriptive terms, such as a handbag for handbag products are not registrable.
• Is your trade mark the same or similar to an earlier registered trade mark for similar goods or services? If so, it will be difficult to register your trade mark.

Make sure your trade mark is available

It is a good idea to enlist the help of trade mark attorney who can assist you with trade mark searches as to whether:

• the trade mark is already in use,
• your trade mark can be protected by registration, or
• if there are similar trade marks in the market or pending applications or registrations that may conflict with yours.

Apply

Once you are all set with the selection of your trade mark, you can apply to IP Australia for registration. It is possible to make the application yourself, but consider whether a trade mark attorney should assist you before you file. Consider an analysis as to whether the trade mark is distinctive, that it is not directly descriptive of the goods or services claimed and that it is not substantially identical or deceptively similar to any earlier trade mark in relation to similar goods or services.

Here is the information you will need:

• name, contact details, and trade mark ownership details
• word mark or other depiction of the trade mark
• class description of the goods or services applied for under the trade mark
• translations for marks in other languages (if applicable)
• IP Australia trade mark application fee, and
• professional fees if you enlist the assistance of a trade mark professional.

You trade mark will be examined by a trade mark examiner at IP Australia in a process that can take three to four months unless an application is made to expedite the examination process. Anyone can oppose your trade mark within two months of your trade mark being advertised as accepted in the Australian Official Journal of Trade Marks. If there are no oppositions in the 2-month period and all fees are paid for, your trade mark will be registered. The earliest date that your trade mark can be registered is around seven and a half months from when you first file your application.

If there are any problems with your trade mark application, IP Australia will issue you with an adverse report notice which sets out the reasons as to why your application does not meet the requirements for acceptance. You will then have 15 months to overcome any issues raised by IP Australia through making submissions or providing evidence of use of your trade mark.

Take away points

• Conduct clearance searches as to the availability of your trade mark before filing an application.
• To register a trade mark, your mark must be distinctive and should not be identical or substantially similar to any earlier trade mark.
• You will have a period of 15 months to overcome any objections raised by IP Australia.
• Any person may oppose acceptance of your trade mark within two months of advertisement of acceptance.
• If there are no oppositions raised, your trade mark will be registered for a renewable period of ten years.

Svethlana Milanes, ABComm

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.