About Trade Mark
What is a Trade Mark
A trade mark is a way of identifying a unique product or service, a.k.a a brand. It helps to identify your products and services over that of your competitors. Trade marks can be a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these.
In Australia, Trademarks are registered with IP Australia.
Who Can Own and Register A Trade Mark
To be eligible the owner must be:
- an individual
- a company
- an incorporated association
- more than one of these (in the case of multiple owners).
A trade mark can also be owned by:
- an unincorporated association (for a collective trade mark only)
- a body existing under legislation (for example a registered charity).
A trade mark can be register by almost anyone that has the right to act on behalf of owner(s). That includes a sole trader, company directors, appointed agents etc.
Why Trade Mark
A registered trade mark provides you with exclusive rights to use, license and sell the mark. It’s also a valuable marketing tool because the value of your trade mark increases with the success of your business.
Business and company names
A common misconception is that a trade mark is the same thing as a business name, company name or domain name. It’s not.
Business names and company names are registered with the Australian Securities and Investments Commission (ASIC). While they’re required to run a business in Australia, they don’t stop others from using the same or similar name.
A register trade mark give you the exclusive rights to that mark, which makes it easier for you to take legal action to prevent others from using it.
Domain names are issued by private internet companies and registered by the .au Domain Administration. The purpose of a domain name is to secure the web URL only.
What is! and what is not! a trade mark
Intellectual property (IP) rights for a design are different to a trade mark. The key differences is that a design needs to be unique or new to be registered as a patent. (Treated confidential until registered)
Examples of designs include (Non Trade marks):
- the new shape of the seat on an ergonomic chair
- the new visual features of a sound system
Also, a design refers specifically to the new visual features of shape, configuration, pattern or ornamentation of a product.
Trade Mark Types
Your trade mark might be your corporate logo, a jingle you use in an advertisement, your business name painted on the side of your truck or your signage or packaging.
A trade mark can also be a:
- word (in a plain font or a ‘fancy’ font)
- aspect of packaging
- or combination of the above...
- Trade Marks can also include "Certification" and "Hash Tags"
Examples of trade marks include:
- the phrase/word ‘The Airpocket’.
- the flying red kangaroo on the tail of Qantas planes.
- Cadburys shade of purple.
You can not trademark common words or a phrase unless they are not associated with the class of goods and service of the trade mark. Eg. "Apple" the IT company could not obtain a word trademark in Food related classes as it's a common word in those industries.
Use It or Lose It!
You must actively use your trade mark in the course of trade. If you don’t, it can be removed on the grounds of non-use. This is to discourage traders from registering multiple trade marks simply to stop others from using them.
Anyone may apply for removal of a trade mark due to its non-use. If your trade mark is officially opposed by someone, IP Australia will send you a notice and you can defend your trade mark's removal.
Your trade mark registration lasts for ten years from its filing date.
You can renew your trade mark registration 12 months before your renewal is due, or up to six months after. You will need to pay extra fees if you renew after the due date.
IP Australia will send you a renewal reminder, so it is important to keep your details up to date.
Matters can arise in the process of applying for a trade mark requiring you to act to protect your trade mark. These events are explained in depth for trade mark oppositions.
There is no legal requirement to register a trade mark. However, if someone else has already registered the trade mark you intend to use, they can take legal action against you. In such events, you are advised to seek the services of an Australia’s legal professionals – particularly lawyers and attorneys who specialise in IP. The same applies with parties that may oppose your trade mark registration.
Cost - Online services
Your trade mark may have differing end costs depending on how many classes you register it under and the application method you use.
For most businesses there are two trade mark application, methods and a typical rates per Class.
- TM Headstart - $330 per Class ($200 on application and $130 to continue after initial review. - Headstart is recommended as it provides early notification and some ability to make changes)
- Standard filing service - $250 per Class
What is a Class
When you apply to register a trade mark you must provide a description of the goods or services you intend to use your trade mark on. These goods and services need to be identified into one or more classes.
Goods and services are divided into 45 classes.
The Trade marks classification search is a list of goods and services classes that you can choose for your trade mark. The database also includes a snapshot of the types of goods and services that fall in each class.
Before you begin, think carefully about the goods or services you want protected by your trade mark. If you make a mistake you will not be able to expand your list of goods or services once you file your application.
It usually takes three to four months to examine your trade mark application once it has been submitted.
With TM Headstart, you will receive within 5 to 7 days a pre assessment report that states if your mark meets registration requirements. In some cases you may be required to show evidence of use.
Your trade mark will then be advertised as 'accepted' and be open to opposition for a period of two months. During this time a third party can challenge your trade mark registration for a number of reasons. For example, if they think it’s too similar to their own. If this happens you may be required to pay court fees to defend your registration. This can be costly so you could consider taking out insurance to help you cover these costs. Trade Mark Protect.
After two months, if there are no oppositions or reasons to revoke the trade mark and any required fees are paid, your trade mark will be registered.
If you get an adverse examination report, you have 15 months from the date of the report to get your application accepted. This means you have 15 months to respond and have the examiner consider your response/s. This could result in acceptance of the application.
Extent Of Protection
An Australian trade mark provides protection only within Australia. There are two ways Australian trade mark owners can seek trade mark protection overseas:
- Via an application filed directly to each country
- Via a single international application filed through the World Intellectual Property Organization (WIPO) nominating the Madrid Protocol countries in which protection is sought
If you apply directly to another country you need to do that through their systems
Unofficial trade mark invoices
Many Australian small business owners are targeted by unofficial third party organisations when it’s time to renew their trade mark.
The companies that send out these invoices access trade mark holder’s details by trawling through public trademark information. The companies sending these invoices are not associated with IP Australia or with any other government agency. DO NOT PAY THESE INVOICES.
These unofficial trademark invoices might suggest they can protect your trademark via placement on an international trade mark register. These registers have no official or legal standing to protect your product. If you are interested in protecting your brand internationally, you can find out more in our international trade mark content.
Examples of unsolicited invoices
These example was sent offering to renew or international registration.