We’ve put together a list of our most frequently asked questions around Trade Marks and Intellectual Property, so you can get an understanding of what it is, how it applies to you, and how to protect your business.
Ideally, it is best to register both your name and your logo as a trade mark.
Having your name (in words) registered as a trade mark gives you the best possible protection, however, this is not always possible. Common objections arising from trying to register your name in plain words are:
If it is found that your trade mark in plain words is unregistrable, it is important that you register your logo as a trade mark. Although it doesn’t give you as much protection as plain words, you at least have some protection.
You are best to obtain expert advice on your particular trade mark before filing your application.
When you’re happy with your logo, same advice applies. When you’re set on your tag-line, same again. Register your Trade Marks in Australia as soon as possible. We encourage clients to get us to do a head-start application for the name, logo, by-line, tag-line etc first, before you go and start to use it in the market so that you can be confident that no one else should have an issue with the mark being used. Especially when you go to so much time, effort and expense and marketing.
Before you file an application for your logo, it’s important to make sure that you own the copyright in the logo. If you have designed the logo yourself, you will, of course, own the copyright but if you have had it designed by a graphic designer or obtained it from an image site or similar, make sure you have written confirmation that all copyright in your logo has been transferred to you before filing your trade mark application.
You can combine your name and logo together in what’s called a composite mark. In some circumstances, it might be worthwhile to do from a costs perspective, especially if you tick a few classes (remember you pay per class, per application).
However, from a legal perspective, you whittle down the individual elements of the mark (i.e. less strong in terms of value) when you combine them.
Our advice is usually that it’s best to separate the individual elements of a mark and have maximum protection from a legal perspective. Of course, financial considerations will need to be made given you are paying for a separate application, as IP Australia views them as separate pieces of intellectual property.
Trade Marks are registered with IP Australia.
There is no legal obligation to register your trade mark. As soon as you use your mark (most commonly business name, logo, slogan/ tag-line / slap-line or product names), you have what is called inherent rights which are common law rights.
The reason why you register your mark with IP Australia is so that you have much greater protection. Your rights in the mark are easier to enforce. IP Australia is the central repository of all intellectual property including trade marks in Australia.
To register your trade mark in more classes, you’ll need to file a new application. It’s not possible to add classes to an existing application.
There are 45 classes to choose from when filing your trade mark application.
It’s important to seek legal advice to ensure you are fully protected from the get go as this will save you time and money in the long run.
The Head Start application is a great way of speeding up the examination process (usually takes a couple of months otherwise) and you get to know within 5 business days whether or not IP Australia has any issues with the mark, or if IP Australia thinks anyone else has any issues with the mark.
It’s a confidential process so, if there are massive issues with the mark, you can determine what to do with it (either modify, proceed or abandon) without having gone down the track and then be told that you can’t register the mark in its current form.
We recommend the Head Start process now for most clients, unless they’ve been using the mark for a very long time or there is a competitor on the scene and they need a filing date immediately to stop them from using the mark or to get there first and protect.
For standard trade mark applications, it usually takes around 7.5 months from the date that the trade mark application is filed to the date that the Certificate of Registration is issued.
That might seem like a long time to anyone to obtain protection. But you actually obtain protection as soon as you obtain the filing date of the application. So you have more rights as of that date.
The Head Start application speeds up the examination process to 5 business days. But the entire process is still the same amount of time. It just speeds up the initial examination of the mark. And after 2 months, they simply do a “top-up” search to make sure nothing has changed in those 2 months.
Trade marks registered through IP Australia only protect your trade marks in Australia. If you want protection in a particular jurisdiction (i.e. country), you must apply for protection in that particular country. i.e. just because a business has a trade mark in the USA, doesn’t mean they have any protection here necessarily. They will need to be trading here or register a trade mark here in Australia to obtain that protection. Same goes for Australian businesses in other countries.
It’s important that you file a trade mark application in each country where you trade. Australian businesses must file applications for trade marks in Australia first, before filing in any overseas countries.
It’s also important to note that if you file an application in Australia first and you intend to, or do, sell your product or offer your service in other countries, you should file an international application in those countries within 6 months of filing your Australian application. This will give you the benefit of claiming your Australian filing date as the overseas filing date, giving you longer protection.
Once a trade mark is registered, it initially lasts for 10 years from the date of filing your application. It can be renewed every 10 years by paying renewal fees to ensure that your trade mark is kept alive indefinitely. Government renewal fees are currently $400 per class but these could change at any time.
It’s important to note that you must actively use your trade mark once it is registered or it can be removed on the grounds of non-use. Click here to learn more about Non-Use Removal Application.
Once you have a registered trade mark it is strongly recommended that you mark your brand and any products with the ® symbol. This puts others on notice to respect your trade mark. It is illegal to use the ® symbol before your trade mark is registered.
You may use the ™ symbol on your brand material if you have not filed a trade mark application or you have a pending trade mark but it is not essential and it gives you no legal rights.
Yes, an online request needs to be made to IP Australia stating the new name and/or address.
If you have changed your name you need to provide evidence to show the change. If it is a minor amendment to your name, no evidence is generally required.
No evidence is required if you are simply updating your address.
A trade mark must be registered in the name of an individual, a company or a trust. It’s not possible to register a trade mark in the name of a business.
Before filing a trade mark application it’s important to make sure that the applicant owns the trade mark. This is particularly important if your trade mark includes artwork (ie, a logo). The copyright in the artwork must be owned by the applicant. Therefore, the applicant may need to purchase the copyright in the artwork before an application to register a trade mark is filed at IP Australia.
Yes, in some circumstances. If you have filed a TM Headstart application you have a small time frame (usually 5 days) to make amendments. You may have to pay an additional fee to do this.
It’s not possible to make substantive changes to your actual trade mark once it’s been filed at IP Australia. A new application will need to be filed.
You can change your name and address and limit the goods and/or services you originally filed your application with, by filing an amendment request at IP Australia.
It’s recommended to search the IP Australia database to check there are no identical or similar trade marks already on the register.
In saying that, if you are filing your application through the TM Headstart system, a pre-assessment application is filed and IP Australia undertakes a preliminary search to check if they anticipate there to be any problems with your application. This is a quick and cheap way to find out about any potential issues IP Australia will raise before you pay the full filing fees.
Once a trade mark is filed at IP Australia, only very limited amendments are allowed to be made. If your trade mark is rejected, it’s not possible to get a refund on the government fees.
This is why it’s best to get legal advice before filing your application as to whether or not your trade mark is likely to succeed.
No. Once your application is accepted, you will receive the official Notice of Acceptance. Assuming no objections are raised during examination, you should receive the Notice of Acceptance about 5 months after filing your application.
Your application is then advertised in the Trade Marks Journal and it will be open for public inspection for 2 months. During this time anybody may oppose your application.
If an intention to oppose is filed by a third party, you will receive notification from IP Australia.
If no intention to oppose is filed, your application will proceed to registration and the Certificate of Registration will issue around 7.5 months from filing your application.
No. Having a registered trade mark doesn’t automatically entitle you to the domain name.
When responding to an Adverse Report, it’s best to get legal advice relating to your particular case. Your advisor can then prepare appropriate arguments and file it at IP Australia.
Yes, once your application has been filed with IP Australia, your trade mark details are uploaded to the IP Australia database for anybody to view. This includes:
If you are concerned about having your personal details on record, you can use a PO box or if you are engaging a lawyer, you can use their address.
Trade marks need to be renewed every 10 years.
If your trade mark is not renewed by the expiry date, there is a 6 month grace period within which you can pay the renewal fee to keep your trade mark alive. Monthly extension fees will also need to be paid to IP Australia.
Once the 6 month grace period has expired, your trade mark will be removed from the register and you will no longer have any rights to your trade mark. A new application will need to be filed.
There are a number of factors to consider before re-filing your application, such as someone else is already using the same or similar trade mark to yours. Because you have previously registered your trade mark, it does not automatically mean you will get it registered again.
If you have an expired or removed trade mark please get in touch with us so we can give you the best course of action going forward.
When you file a request at IP Australia to register a trade mark, this is known as a trade mark application. Your trade mark application is then run through an examination process and if allowable, your trade mark application will get accepted. Your application is then advertised in the Trade Marks Journal which means it is open for the public to oppose your application for a period of 2 months. If your trade mark is not opposed you’ll then receive a Certificate of Registration.
Once you receive a Certificate of Registration (at least 7.5 months after filing your application), you will have a trade mark registration. A trade mark registration gives you legal protection for the next 10 years when you can pay renewal fees every 10 years to keep it alive indefinitely.
Once a trade mark application is accepted, the application is advertised in the official Trade Marks Journal. Other people have 2 months from the date of advertisement to oppose the application by filing a notice of intention to oppose.
If you have a trade mark registration that you did not intend to use on the goods or services for which you have protection for, someone may oppose your registration on the ground that you did not intend to use it.
If you have a trade mark registration which you have used but have stopped using it, someone may apply to have your trade mark removed on the grounds of non-use.
Click here to see the costs for a trade mark application in Australia from filing to registration.
GST is not payable on any IP Australia fees.
If you have any questions at all, please don’t hesitate to contact us.
If you have a registered trade mark, it’s advisable to add the Registered Trade Mark Symbol to your branding.
The easiest way to do this is:
Hold down the “Alt” key and type 0174. This will create ®
Hold down the “Option” key and press “R”
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