Frequently Asked Questions

What is a trade mark?

A trade mark is something that is used to distinguish your goods or services from those of other businesses. A trade mark may be a business name, product name, tag line, aspect of your packaging, logo or something else that you use to help your clients identify your brand amongst the sea of competitors.

A trade mark can be registered or unregistered. While owners of unregistered trade marks do have legal rights, it is easier for owners of a registered trade mark to enforce their rights.

For more information take a look at my blog post: What is a Trade Mark?

Should I get a trade mark

The question of whether you should get a trade mark is a business decision that is dependent on a number of factors.

Firstly, consider how you would feel if you had to change your brand. If you’ve poured your heart and soul into creating and building your brand then you might be more inclined to want to protect is.

How much would it cost you if you had to change your brand? If you had to change your business name or product name or logo, etc, then the cost of rebranding can be significant. In most cases the cost of registering a trade mark will be small compared with the cost of rebranding, which may included costs of a graphic designer, a new website, new packaging, new marketing materials and the cost of advertising to rebuild awareness of the new brand.

However, if your business is very new and is still finding it’s feet then the time may not be right to get a trade mark. If you are still working out what products and/or services to offer, if you haven’t worked out what niche to focus on or your think you might change your business name or logo, then it might not be the right time to commence a trade mark application.

How much does it cost to register a trade mark?

The cost of your trade mark will depend on the scope of products and services you would like to have covered by your trade mark.

The trade mark registration system categories all goods and services into 45 different classes. This classification system is used primarily to help trade mark examiners and businesses to find information when searching on the trade mark register. However, the class system is also used to calculate the costs of registering your trade mark. The more classes that are included in your application the higher the cost.

To find out general information about costs click here.

To get a quote for a trade mark registration for your business click here to book a free consultation.

How long does it take to get a trade mark?

The process of getting a trade mark registered is a long one. The earliest date your trade mark can be registered is 7 1/2 months from the date your application is lodged. The process can be much longer, however, if you receive an adverse report from the trade marks examiner or your trade mark application is opposed.

Regardless of how long the process takes, the registration of your trade mark is back-dated to the date your application was first lodged.

Can I apply for a trade mark myself?

Yes, you can lodge a trade mark application yourself. The process of filling in the online form is very simple.

However, there are a few questions you should answer before you lodge your application and this is where the expertise of a Trade Marks Attorney can save you time and money.

(1) What is your brand protection strategy?

If you intend to only get one trade mark registered you will need to decide which mark in your business needs the protection the most. Is it your business name, product name, service name, tag line, logo, colour combination, product shape? Which is most at risk of being copied? Which one earns you the most income? Which one is the most valuable asset? Which one are you using the most?

Before applying for a particular trade mark you should consider your business as a whole as well as your plans for your business over the next few years. Then you will be able to outline a strategy for how you can best protect your business going forward.

(2) Is your thing (your brand, business name, logo, etc) a trade mark?

This seems like a pretty obvious question yet you’d be surprised at how many people lodge their trade mark application without first checking that the thing they want to register actually meets the legislative definition of a trade mark.

(3) Do any of the grounds for rejecting your application apply?

If your application is at risk of being rejected because it triggers one of the grounds for rejection under sections 39 to 44 of the Trade Marks Act 1995 (Cth) then it’s better to know that BEFORE your application is lodged and you pay your fees.

This is the step where you’ll need to do a thorough search for similar trade marks already registered in Australia, as well as any unregistered trade marks that might be problematic. Keep in mind that the interpretation and application of the Trade Marks Act is shaped by decisions of the Trade Marks Office and the Federal Court of Australia so knowledge of these cases will assist you in determining how the various sections of the Act apply to your business.

Once you’ve considered your mark in relation to each of the grounds for rejection you can make an informed decision whether to proceed with your application or not. If potential issues are identified but you decide to go ahead with your application anyway, having this knowledge will help you to anticipate the issues that may be raised by the examiner or in an opposition proceeding and you’ll have extra time to gather the evidence or additional information the examiner or hearing officer may require.

(4) Are you trading overseas or planning on trading in countries outside Australia?

If you plan on trading in any countries outside Australia then you will also want to check whether your mark will be infringing any registered or unregistered trade marks in that jurisdiction. Many businesses miss this step and get caught out, having to change their name or rebrand when they expand their business overseas.

So, what will happen if you skip these steps and go straight to lodging your application. Maybe nothing. But maybe you will get an adverse examination report from the IP Australia examiner. Maybe your application will be opposed by a competitor. Or maybe your trade mark will get registered but then doesn’t provide sufficient protection when you try to enforce it. Or maybe a competitor will challenge your trade mark and get it removed from the register. There’s no way we can look into the future, but if you’ve answered these questions you’ll be aware of possible issues and will be able to be proactive in addressing them.

 

NOTE: Keep in mind that IP Australia can advise you on the application process but cannot provide you with legal advice on how to get the best protection for your business. To get that kind of advice you will need to speak to an intellectual property lawyer or trade marks attorney.

When can I use the TM or R symbols?

The TM symbol indicates that you are using that word, phrase or logo as a trade mark. This puts your competitors on notice that you are using it as a trade mark but it also indicates to them that your trade mark is not registered.

If your trade mark is registered then you are permitted to use the R symbol. It is an offence to use the R symbol on an unregistered trade mark.

How do I enforce my trade mark rights?

Your trade mark registration is managed by IP Australia but it is up to you to take action against people who infringe your trade mark rights.

Trade mark infringement occurs when another person uses your trade mark, as a trade mark, and in relation to similar goods or services, in the course of trade in Australia. If you suspect that someone may be infringing your rights then you should seek professional advice as soon as possible.

What are the benefits of having a trade mark?

Th owner of a registered trade mark has, with some exceptions, the exclusive right to use the registered trade mark as a brand name in relation to the goods and services that are described in the application. The owner of the trade mark also has the exclusive right to authorise others to use the trade mark, for example, in franchise situations. This means that the owner of a registered trade mark can take action to prevent others from using the trade mark in relation to similar goods and services.

A registered trade mark is also a type of personal property. This means the trade mark is an asset that has value and can be sold.

Where does my trade mark operate?

A trade mark registration covers the whole of Australia unless otherwise noted on the registration.

This means that the owner of the trade mark has the exclusive right to use the trade mark in the course of trade in Australia.

If you’re trading in other countries as well then you may want to consider lodging trade mark applications in the relevant countries or lodging an international application which is linked to your Australian registration.

How long does a trade mark last?

A trade mark registration lasts for 10 years from the date the application is lodged. If the trade mark is renewed every 10 years then the registration can remain current indefinitely.

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Trade marking your business is so important, but can be very confusing. Lisa takes the guess work out of it all and makes everything happen with ease. She is a pleasure to deal with too! I highly recommend Lisa to anyone looking to protect their business name and assets.

Nereeda McInnesThe Nereeda Network