Common Trade Mark Terms and Meanings

B

Basic Trade Mark:  The national application or registration on which the international application or registration is based

Brand Name: The non-legal term for a trade mark.

C

Cease and Desist: A letter sent by a trade mark owner demanding that another company immediately stop using its trade mark

Certificate of Registration: The certificate that issues when your trade mark is officially registered at IP Australia

Classification of Goods and Services: The list of goods and services which you can choose from when you file your trade mark application

Citation / Cited Trade Mark: When your application is examined at IP Australia, the examiner may raise an objection saying that there are already trade marks on the register which prevent your application from being registered.  These conflicting marks are otherwise known as citations or cited trade marks.

Common Law Trade Mark: An unregistered trade mark which has been used in relation to certain goods or services to an extent that it is recognised as distinguishing the goods or services from other businesses

Confusingly Similar: The examiner may object that your trade mark is confusingly similar to another trade mark on the register which may prevent your application from proceeding to registration

Contracting Party:  Any country or state which is a member of the Madrid Protocol

Convention Application: A trade mark application which claims the filing date of an earlier filed application. For example, you file an Australian trade mark application, you can then file a convention trade mark application in New Zealand within 6 months and claim the Australian application filing date (otherwise known as a priority application)

Cybersquatting: Refers to someone registering, selling or using a domain name with the intent of profiting from the goodwill of someone else’s trade mark

D

Damages: A monetary amount awarded to a party.  This could be lost profits as a result of infringing activity

Deferment: During examination of a trade mark application, conflicting mark objection(s) could be raised against the trade mark. Sometimes it’s necessary to negotiate with the conflicting mark owner or wait for an outcome on the conflicting mark. It’s possible to place your trade mark application in deferment pending the outcome of a particular activity.

Designated Countries:  The countries which you nominate on the international application form as countries which you are seeking international trade mark protection

Descriptive Trade Marks: The words of the trade mark are descriptive of the goods and services for which protection is sought. For example, “Ink” for pens. If a trade mark is too descriptive it will not obtain trade mark registration

Domain Name: Otherwise known as your website address (www.yourcompanyname.com)

E

Examination: The process your trade mark application must go through once it has been filed at IP Australia to check it is allowable to be registered as a trade mark

Examiner: The person at IP Australia who your trade mark application has been delegated to, to examine your application

Exclusive License: An agreement between a trade mark owner and another party that permits the other party to make certain use of the trade mark

Extension of Protection: The document that is issued by WIPO when an international trade mark has been officially registered.

Extension of Time: In some circumstances it’s possible to request an extension of time to file documents at IP Australia.

EC: European Commission

ECTA: European Communities Trademark Association

EPI: Institute of Professional Represenatives before the European Patent Office

EPIP: European Policy for Intellectual Property

EPO: European Patent Office

EU: European Union

F

Filing Date: The date in which your application was officially filed at IP Australia

H

Holder:  The owner of an international registration

I

IB:  The International Bureau of the World Intellectual Property Organisation (WIPO)

Infringement: Using someone’s intellectual property without their consent and the unauthorised use will likely cause confusion

INTA: International Trade Mark Association

International Application:  Your international trade mark application before the International Bureau (IB) has issued a Certificate of Registration

International Register:  The IB’s database that contains all international registrations, including details of each designated country

International Registration: Your international application after the IB has issued the Certificate of Registration and notified the designated countries

IP Australia: The body that governs intellectual property in Australia

IPONZ: The body that governs the intellectual property in New Zealand (The Intellectual Property Office of New Zealand)

IPTA: The Institute of Patent and Trade Mark Attorneys of Australia

IPSANZ: Intellectual Property Society of Australia and New Zealand

IPLA: Intellectual Property Lawyers Association

L

Legislation: The process of making or enacting laws made by the Government

Licensee: The party that receives a license to use a trade mark

Licensor: The owner of a trade mark that grants a license to another party to use the trade mark

M

Madrid Protocol: The international treaty relating to the Madrid Agreement concerning international registration of trade marks

N

Notice of Acceptance: The official notice you receive when your trade mark application has been accepted by IP Australia

Notice of Filing: The official notice you receive from IP Australia when your application has been filed. It contains the official number allocated to your trade mark application and the filing date.

Notice of Intention to Oppose: The first document filed at IP Australia when someone wants to oppose the registration of another trade mark

O

Office of Origin:  The Trade Marks Office of the country through which the international application is filed. For Australian applicants this is IP Australia

Opposition Proceedings: The entire process when someone opposes another trade mark

Owner: The official owner of a trade mark

P

Passing Off: A form of enforcement against the unauthorised use of another person’s goods or services

Priority Application: A trade mark application which claims the filing date of an earlier filed application. For example, you file an Australian trade mark application, you can then file a priority trade mark application in New Zealand within 6 months and claim the Australian application filing date (otherwise known as a convention application)

R

Registered Trade Mark: Your trade mark has been registered by IP Australia and you have received a Certificate of Registration

Response: When your trade mark application is examined by IP Australia, an adverse or examination report may issue.  A letter containing arguments to the objections raised may need to be filed at IP Australia.  This is known as a response.

RO: Receiving Office: The national office where the international application is filed

ROMARIN database: The database available on WIPO’s website used to search for international trade mark applications and registrations

S

Search: Before a trade mark application is filed, it’s advisable to undertake a search of the Trade Marks Register to check there are no identical or similar trade marks already on the register

Specification of Goods or Services: The list of goods and/or services which you wish to have protected with your trade mark registration.

Subsequent Designation: Any country that is added to your international registration after the international application is filed at the IB.

T

Trademark Troll: A term used for an entity that attempts to register a trade mark without intending to use it and who then threatens to sue others who use that trade mark.

W

WIPO: The Word Intellectual Property Organization in Geneva

WIPLA: World Intellectual Property Law Agency

WTI: World Trade Institute

WTO: World Trade Organization