A Trade Mark is a sign used or intended to be used in the course of commerce to distinguish the goods or services by a person from the goods or services of another.
At Wynnes we can register and enforce a Trade Mark for legal protection and our team of experienced and qualified attorneys can help you to navigate the process of registering and managing your trade marks.
Read below to find out more about:
- What is a Trade Mark?
- Advantages of Registering a Trade Mark
- Choosing a Trade Mark
- Applying for Registration of a Trade Mark in Australia
- Correct Use of a Trade Mark
- Business Names and Trade Marks
- Watching and Monitoring Trade Marks
What is a Trade Mark?
A trade mark is a sign used or intended to be used in the course of commerce to distinguish the goods or services by a person from the goods or services of another. A trade mark may be a word or words, brand, logo, graphic, icon, shape, colour, sounds, scents and even different aspects of packaging.
A trade mark serves to identify the origin of particular goods or services with a trader enabling the trader to benefit from the reputation and goodwill associated with the trade mark.
Choosing a Trade Mark
In order for a trade mark to be registered it must satisfy a number of statutory requirements including:
- A trade mark must be inherently and or factually distinctive in relation to the particular goods or services for it to be registered. A trade mark is considered inherently distinctive if it is a sign that other traders with similar goods or services would not wish to use to describe their goods or services. A trade mark is factually distinctive if the trade mark has been used by a trader to the extent that consumers associate the trade mark with the trader and their particular goods or services and not with some other business.
- A trade mark must not be substantially identical or deceptively similar to a pending or currently registered trade mark on the trade mark database in order for it to be registered.
- A trade mark preferably does not include a geographical name where the business is or could be carried out; directly descriptive words such as STAY SHARP for knives; and fashionable words such as ECO, ENVIRO, GREEN, OZONE, and “e” for electronic.
- A trade mark which is also a surname is usually not registrable unless it appears less than 500 times on the Australian Electoral Role.
- A domain name may be registered as a trade mark where the identifier satisfies the statutory requirements. The standard address code material such as “http://”, “www”, “net”, “org”, “com”, “au” are not considered distinctive elements.
- Only the owner of the trade mark can register the trade mark. The owner is the person who is the first to use the trade mark in Australia or their successor in title.
- A trade mark can not be registered where the mark is a name that is registered with the Plant Breeders Rights Act.
Applying for Registration of a Trade Mark in Australia
In order to register a trade mark on your behalf, we require:
- The name and address of the applicant. The applicant can be a natural person or a legal person such as a company but not a trust.
- A copy of a representation of the trade mark.
- A list of the goods and or services associated with the trade mark. We recommend also including goods and or services that are intended to be associated with the trade mark in the future thereby avoiding the need to file a further application to cover the new goods or services.
Goods and services are divided into 45 classes in accordance with an international classification system. A trade mark can be registered in respect of goods or services in one or more classes.
From the provided information we will initially conduct an exact mark search to determine whether the same trade mark is the subject of a pending application or a registered trade mark in respect of the same goods or services on the trade mark database.
If an exact trade mark is located we will report the search results and not proceed further with the trade mark application.
If we do not locate an exact trade mark we will prepare the trade mark application and forward a copy of the application for your approval and also report the search results.
We will conduct the exact mark search free of charge if a trade mark application is subsequently prepared and filed. Where a trade mark is not filed we will only charge for conducting the exact mark search. The purpose of the exact mark search is to avoid the needless expense in applying for trade mark registration where the exact trade mark already exists on the trade mark register.
After approval has been provided we will file the application with the Australian Trade Marks Office. The trade mark application is placed in a queue for examination by the Trade Marks Office. Applications are examined in order of lodgment. Examination of a trade mark application can be expedited if required upon application by the applicant. When an application has been examined, the examiner may issue a report raising their objections to registration of the trade mark. Typical objections are that the mark lacks distinctiveness and/or that the registrability of the mark is blocked by the existence of conflicting prior registration or application.
A trade mark applicant has a fee free period of 15 months from the date of the first report within which to overcome objections and obtain acceptance of the application. A further 6 months can be obtained on the payment of monthly extension fees. We therefore recommend that trade mark applications be prosecuted through to acceptance as soon as possible after the first report has issued.
Response to the objections may include legal argument, amendment of the application and or filing evidence in support of registrability.
If the objections have been successfully overcome, the application will proceed to acceptance. After a trade mark application has been accepted, it will be advertised for opposition purposes. The opposition period provides a third party to oppose the registration of the trade mark.
After the opposition period has expired and no opposition proceedings have commenced, the trade mark will proceed to registration upon payment of the registration fee.
The trade mark is registered for a term of 10 years from the filing date. The term can be renewed every 10 years to maintain registration with the payment of renewal fees.
After five years from the date of filing, a registered trade mark is vulnerable to removal for non-use if the trade mark has not been used during a continuous period of three years. If a removal action is initiated by a third party, the trade mark owner must demonstrate that there has been use of the trade mark during this period to maintain the trade mark on the register.
Correct Use of a Trade Mark
It is important that a trade mark is used correctly.
- When the trade mark is used it should always indicate that the word or logo is a trade mark.
If a trade mark has not been registered, it should be marked ™ to indicate that the word is being used as a trade mark.
If a trade mark has been registered, goods should be marked to indicate registration. For example registration can be shown by placing an R in a circle eg. ® or Regd™ next to the relevant trade mark.
It is also advisable to indicate the name of the owner of the trade mark on the goods.
As a cautionary note we point out that it is a criminal offence to represent that a mark is registered in Australia when that it is not. Severe penalties apply for such offences.
- The trade mark should never be allowed to become a generic name for a product or service. A registered trade mark owner should act quickly and effectively to stamp out any unauthorized use of their trade mark. If they do not do this, the trade mark may cease to function as a trade mark and instead become a generic descriptor for a product or service. The registration of a trade mark which becomes generic may be cancelled. The trade mark will then be available for all to use.
Business Names and Trade Marks
A common misconception is that registration of a business name confers property rights in the name. It does not! The requirement to register business names is consumer-focused legislation to assist people who are dealing with a business to identify the principals of the business.
If a business name is being applied to goods or being used to indicate services, it is being used as a trade mark and a separate application for its registration as a trade mark should be considered. The trade mark registration will then confer the exclusive right to use that mark in relation to those specific goods or services throughout Australia.
Advantages of Registering a Trade Mark
Registration of a Trade Mark provides the owner with proprietary rights in the mark:
- In contrast business name, company name or a domain name registration is consumer focused legislation that does not provide the registrant with ownership of the mark;
- and no one is allowed to use the mark without the owner’s authorization;
- throughout Australia;
- and avoids the need to establish Passing Off of an unregistered trade mark in costly court proceedings;
- and prevents the registration of a subsequently filed substantially identical or deceptively similar trade mark;
- alerts competitors and others that the trade mark is protected from unauthorized use;
- and the registration can be included in the balance sheet for business valuation purposes;
- and the registration can facilitate the franchising and licensing of a business;
- and the registration provides a defense against infringing other trade mark registrations.
Watching and Monitoring Trade Marks
We also provide searching services including clearance searches to determine whether a trade mark can be used in a particular jurisdiction and registrability searches to determine whether a trade markcan be registered in a particular jurisdiction. These searches can be conducted with respect to Australia, New Zealand and any other desired country or region. As stated above, we can with instructions conduct an exact mark search on the Australian or New Zealand trade mark register to determine if the trade mark is already on the register in respect of the specified goods or services before filing a trade mark application.
We can also monitor the progress of a competitor's trade marks for business purposes.