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.
A trade mark is something you use to distinguish your goods and services from other providers.
It tells you apart from them so that customers aren’t confused between you and another business. Think about all the bigger brands out there and what you’ve seen used in advertising from one brand to another brand.
For a small business, there are commonly 4 different types of trade marks:
These aren’t necessarily in order of preference in terms of protection. A business could have a generic name but seek to protect their logo first or their tag line because of the relative importance of it or perhaps the amount of time, effort and cost in producing the logo for instance. It really is a case-by-case basis and some quick advice from a professional is invaluable in most instances we’ve found after advising 2,000+ small business in the last 4 years.
You can use a registered trade mark as a shield or a sword. A shield to stop others from registering the same or similar mark underneath you on the IP Australia register. i.e. first come, first serve.
A sword to be able to rely on to stop others from infringing your IP and misleading the market, confusing potential customers or even taking profit away from your business. We’ve seen it happen a lot: derivative product names, logos etc. Especially now that businesses are starting to become very savvy about their rights and becoming very protective of their brands.
With intellectual property becoming more valuable in most businesses (and in some instances, their entire asset), it’s really starting to become valuable property.
As we said earlier in the article, Intellectual Property (IP) law is becoming a really hot topic.
IP generally is becoming more and more valuable as businesses invest in technology and new ways of doing things, new trade marks to protect, new designs, new patentable inventions, technical know how, automation, inventive steps, processes and secrets worth protecting. The Internet is the driving force behind most of the change and for some businesses e.g. AirBnB, Facebook, Uber etc – almost their entire balance sheet is IP.
Even medium and smaller busineses are investing heavily in IP as they see this is the new currency of the digital age. It is what can make a smaller business compete with larger ones and even outgrow them rapidly, if that IP is protected.
It’s becoming really important in this day and age where we’ve not only got a scarcity of names happening but also more businesses doing more global business and protecting their IP in international markets as the knowledge in this area grows more and more.
Having registered trade marks in Australia allows you to prevent others from infringing your intellectual property rights. E.g. stop someone else from confusing the market as to who is the rightful owner of that mark.
In most circumstances, securing the business name is the first port of call given that most of the investment in IP is around your brand “name” as opposed to a logo or a slogan/by-line/tag-line etc.
We recommend that you get your name trade marked first as soon as you’re set on the name and happy with it. It takes a lot of time to come up with a name and once you finally have determined that this name is the right name for your business, then it is extremely wise to protect it as soon as possible for a couple of reasons. Firstly, getting the registered trade marks in Australia now ensures that you have the maximum rights available to stop someone coming along afterwards and copying your name and confusing the market.
You might think, what’s the chances of that happening?, but believe me it does. Even competitors have been known to try and frustrate their opposition by registering similar names and releasing products with same or similar names in order to confuse the market and frustrate you. We have seen it happen too many times.
Names are becoming more scarce and a lot of businesses are starting to take a very active interest in securing their intellectual property. The cost of potentially going through a rebrand should be a scary proposition for any business owner. Not just the cost of having to change all your branding, documents, contracts, new business name registrations, domain names, business cards, stationery, flyers, social media handles – let alone the business frustration and interruption!
It’s much safer to get your trade marks in Australia done, and get it done now. It’s not as expensive as you might think. Small investment now to protect your business down the track.
A business is the name under which your business operates which you must register with ASIC. You’ll receive an Australian Business Number (ABN). A business name registered with ASIC does not give you any legal rights to the name. This means that if someone else uses your business name you don’t have any rights to stop them.
A trade mark legally protects your name and gives you the right to stop others from using it. When you register your business name as a trade mark you get the exclusive rights to use that trade mark in Australia initially for a period of 10 years, and indefinitely if you pay renewal fees every 10 years.
Just because you have a business name, doesn’t give you the right to use it.
I know that sounds really strange but only a registered trade mark will give a business the most protection needed to trade.
A business name is a nickname essentially and distinct from a legal entity.
The legal entity might be for instance Bob Smith T/as Bob the Builder, or Bob Smith Pty Ltd t/as Bob the builder (if a company). The individual or company owns the business name, and can own many others.
We have seen so many cases where a business that starts to trade (sometimes even for a long period of time), then finds out that they need to stop trading with the name because they are infringing someone else’s trade mark. It is an extremely serious issue if it happens and is in most circumstances a very expensive exercise.
Make sure you have all the rights to use your business name by seeking legal advice.
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.
First things first. Protect the evidence. Screenshot any offending material, evidencing how many people have viewed the material (e.g. on social media), search for all offending material by the same business/person and do likewise.
Secondly, seek legal advice straight away. The longer you wait, the worse it will get and time is of the essence.
Call/email us as soon as possible so we can go through it together and work out an immediate strategy.
Here’s a case study of what happened when one of our clients was approached by an international law firm for trade mark infringement.
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.
This is so that, for instance, an accounting firm can co-exist on the IP register and not offend a big food store just by having the same or similar name.
It means that many businesses can co-exist and not have a monopoly over a business name. For instance, when they operate in a completely different market, it’s genuinely not going to confuse the market by having the same or similar name.
There are a lot of classes with thousands of activities (you can just imagine how many businesses are doing what types of activities).
The downside is that you have to pay per class, per application. However in most instances we find businesses will only tick 1 or 2 classes of business, but in some circumstances 3 or 4.
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.
Like anything, if you don’t do something every day, there’s a greater chance you’re likely to get it wrong than having someone that does. Also, it’s probably not your highest and best use of time. E.g. I get my accountant to do our tax returns.
The situation with trade marks is that you’re not allowed to substantially amend the trade mark (unless you narrow the scope) after you’ve filed it. So, if you muck it up, you basically have to do the whole thing again and start from scratch and pay all the fees again.
It’s not that expensive and at least you know that the mark you register is going to give you the protection you need, or as much as you can afford. We’re practical when it comes to these matters.
We charge a flat fee $850 + GST + government charges.
Be very wary of those law firms or IP attorneys that charge per class. We understand why they would do this in that it takes a bit longer for each application when extra classes are added and activities need to be identified. However, in our experience, it doesn’t truly represent the real time involved. And it additionally provides further disincentive for clients to get the protection that they need.
The government charges are $330 per class per application for a headstart application and $250 per class per application for a straightforward application.
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.
When the words of your trade mark are behind the # symbol and it’s becoming well known in the marketplace that the hashtag belongs to your brand, a hashtag trade mark should be registered. Learn more here.
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.
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