Registration of Trade Marks
What is a trade mark?
A trade mark is a sign, mark, logo or image used or intended to be used to distinguish goods or services dealt with or provided in the course of trade by a person or organisation, from goods or services dealt with or provided by any other person or organisation.
It may include any of the following or any combination of the following:
letter
name
word
signature
numeral
device
brand
heading
label
ticket
aspect of packaging
shape
colour
sound
scent
design
Accordingly, a logo and any letter or word trade marks may properly operate separately as a trade mark. Often, you will use them in close association with each other. However, your rights are best advanced by registering both of these as separate trade marks.
Benefits of registration
IP Australia administers the range of intellectual property rights and legislation relating to patents, trade marks, registered designs and plant breeder's rights in Australia. It provides a register for trade marks to be registered to attract certain distinct and enforceable rights under the Trade Marks Act 1995 (Cth).
A trade mark can often be your business’ most valuable asset. Following registration, you will hold the exclusive right to use, licence or sell your mark in Australia. Registration will provide proof of ownership in disputes which may arise if someone attempts to use it.
Broadly speaking, once a trade mark has been registered, you will obtain an Australia-wide monopoly for use of that trade mark as a trade mark in respect of the goods or services for which registration was granted. You also don’t have the burden of establishing the connection between the use of the trade mark and your business’ reputation if your trade mark is registered.
You will not obtain this right if you use your mark as a business name, domain name, or company name without registering it as a trade mark.
A “Common Law” Mark
Despite your mark not being registered with IP Australia, you will be permitted to continue using it if you were the first to use the mark despite it being registered to another business. However, if you were not the first to use the mark, you may be at risk of a claim by the registered owner requiring you to “debrand” if they are using it for the same class of goods and services as you do.
Classes of goods
For the purposes of registering a trade mark, all goods and services are categorised into classes.
There are 45 different classes of goods and services. Classes 1 – 34 are classes of goods and classes 35 – 45 are in respect of services. A list of the classes can be found here.
When applying to register your trade mark you must nominate the classes which are relevant and applicable to the goods or services that your mark operates in. Each class will attract a registration fee however, it is important to ensure that the classes are carefully selected as your trade mark will only be protected in the class(es) in which they are registered.
Application
The current delay in registering trade marks with IP Australia can be up to 12 months, although in certain circumstances an application can be made to have the application expedited.
Applying for registration of a trade mark involves:
preliminary searches to establish whether there is a trade mark that may be the same or very similar to your trade mark;
lodging an application for registration of a trade mark with IP Australia;
dealing with any objection that IP Australia may have to the registration of the mark; and
paying registration fees which will ultimately be a prerequisite to the issuance of a certificate of registration.
Examination
Following an application being made, it generally takes at least three to four months for the Registrar of IP Australia to examine the application to ensure that it contains the correct information and meets legislative requirements.
IP Australia will then provide notification as to whether your trade mark is accepted provided that it meets all registrability requirements. The trade mark will then be advertised on the IP Australia website 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 defend your application in Federal Court proceedings.
After two months, if there are no oppositions or reasons to revoke the trade mark and all required fees are paid, your trade mark will be registered.
If your trade mark application does not meet legislative requirements, you may receive an adverse examination report from IP Australia. You have 15 months from the date of the report to overcome the issues raised and have the application re-examined and accepted.
General and descriptive words
Descriptive words which are clearly required for use by other traders lack inherent adaptation (not merely descriptive) to distinguish one trader’s goods and/or services from those of other traders. In Words that are not inherently adapted to distinguish may include words which are used as indications of kind, including the name of the goods or services themselves, intended purpose, geographical origin.
Traders will not be granted an effective monopoly over general or descriptive words such as these which other traders legitimately need to use in describing or extolling their goods or services or to indicate the origin of their goods or services.
The question is whether other traders are likely, in the ordinary course of their business, and without any improper motive, to desire to use the same mark or some mark nearly resembling it, upon or in connection to their own goods.
For example, the words ‘sedan’ and ‘station wagon’ are commonly used to indicate vehicle size in the auto trade and would not be acceptable for cars. Words like ‘large’ and ‘small’ would be difficult to register for any goods or services.
Contact us today to discuss the registrability of your trade mark.