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Trade Marks in Australia

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 a 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.

There are two ways Australian trade mark owners can seek trade mark protection overseas. Note, prior to applying for a trade mark overseas, you must have applied for that same trade mark in Australia. The first way to trade mark overseas is via an application filed directly to each country. The second is via a single international application filed through the World Intellectual Property Organisation (WIPO) nominating the Madrid Protocol countries in which protection is sought.

 

Applying for a trade mark

Before making an application to register your trade mark, the following should be considered:

  • 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. A search should be carried out before applying to register a trade mark to check that a similar trade mark is not already registered.
  • Only minor changes can be made to a trade mark once an application has been filed and published.< class="icon-right-circled"/li>
  • 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. As 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 scope of the application. Generally, the minimum cost to apply is $250 for each class of goods and services. In Australia there are 45 different classes of goods and services. Each additional class registered in will cost an additional $250 – so costs can add up quickly.

 

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.

 

Conclusion

Applying for an Australian trade mark is a straight forward process. By investing in protecting your brand today, you can avoid the costly and uncertain exercise of preventing unauthorised use of your unregistered trade mark.

If you or someone you know wants more information or needs help or advice, please contact us on (02) 9274 8820 or email ch@lawbase.com.au.

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