Trade marking is an important step to completing and protecting your business assets, however this process can be complicated.
Simply typing ‘trade mark Australia’ on Google may not answer all your questions.
Registering your trade marks is always a good idea to ensure you own the intellectual property rights to your unique branding features.
After registering a trade mark, your rights to the mark will be easier to enforce, as you will have the exclusive right to the use and registration of the registered trade mark as soon as it’s registered under the Trade Marks Act. The great thing about that is that you don’t have to prove reputation in the market, whereas you would if you only have misleading and deceptive conduct under the Australian Consumer Law, or the tort of passing off to rely on.
If you don’t register your trade mark, you can only rely on what is called inherent rights (which are common law rights) that accumulate over time through longstanding use your mark, when trying to stop another trader’s use of your trade mark.
Important to note is that you are not granted any exclusive rights to a brand by registering a company name, business name or domain name for this brand. You can only obtain exclusive rights, and enforce those rights, by registering your brand as a trade mark.
When trade mark rights have been violated, trade mark owners should take legal action.
If the trade mark is registered, those owners can exercise their rights under the Trade Marks Act 1995. This Act protects trade marks for the goods and services to which it’s registered, ensuring that the trade mark’s reputation and goodwill remains intact.
For unregistered trade marks, however, this process is a little more complex. Owners of unregistered trade marks may claim misleading and deceptive conduct through the Australian Consumer Law and the tort of passing off. To do so, you must prove ownership of the trade mark in question, show that a misrepresentation has occurred as well as (likely) damage to the trade mark owner’s reputation or goodwill as a result. In other words, it’s much more difficult to enforce your rights to an unregistered trade mark.
You can register a trade mark for more than just a business name. Any sign that help consumers distinguish your goods or services from those offered by competitors can be registered as a trade mark. This includes distinctive words, taglines, slogans, logos, pictures, but also sounds, smells, movements, colours or shapes.
However, common signs cannot be trade marked as they should remain available for all traders to use. If your brand consists of commonly used signs, it may not be eligible for trade mark rights.
Trade marks are registered with IP Australia and are recorded on the Australian Trade Marks Register, which is publicly available to trade mark search.
A trade mark must be registered in the name of an individual or a company. It is not possible to register a trade mark in the name of a business (as a business name is really just a nickname).
Before filing a trade mark application it’s important to make sure that you’re listing the correct applicant, as the application will own the trade mark and listing the incorrect owner at the time of filing can have unfortunate consequences later down the track.
The basic rule to establish correct ownership is: the person or company that controls the use of the trade mark is the owner of the trade mark, and should be listed as the application of the trade mark application. The copyright in any artwork included in the trade mark (i.e. a logo) must also be owned by the applicant. Therefore, the applicant may need to arrange for assignment of the copyright in the artwork before filing an application to register a trade mark at IP Australia.
If your registered trade mark is under your name, you may be personally liable if there’s any sort of infringement or any issue with the brand or the trademark itself. 50% of the time, we find when we’re doing searches for people that have had trade marks registered in the past, details need to be changed on the register.
Incorrectly listed ownership of a trade mark is also a liability in itself as anyone can oppose a trade mark if the applicant is not the owner of the trade mark.
Yes, even more so. And here’s why.
If you’ve been in business for 5/10/15/20 years, you would have accumulated more intellectual property in your brand than you might realise. In fact, a lot of investors will insist on trade marks being registered before investing money into a business – that’s how important they are from a risk management perspective.
Also, just because you never had issues with someone infringing your brand before, doesn’t mean it can’t happen now or in the future. Especially nowadays with overseas business trading here, businesses moving inter-state and registering trade marks, business toes can be trodden on fairly easily.
The consequences of having to go through a rebrand can be really scary and they get more costly and more scary, the longer you’re in business. If you’re set on your business name and your designs, it’s time to take some actions and protect your brand.
It’s so easy to do a quick search on ATMOSS to see whether your trade mark is available. All you have to do is to get help from experts to file your trade mark application(s), to make sure you’re doing it the right way.
The Australian trade mark registration process is conducted through IP Australia. IP Australia is the governing body of all registered intellectual property in Australia.
First, before filing your trade mark application, it’s important to understand the classes of goods and services you need to include in your trade mark application, and to check if your trade mark is available for those goods and services by doing a trade mark search.
After filing a normal trade mark application, you will receive a notice of filing within a few days. You’ll obtain confirmation from IP Australia that the mark has been applied for and a priority date allocated.
From there, it usually takes 2 or 3 months for the mark to be formally examined by a trade mark examiner, at which point they will indicate whether IP Australia has any objection to the mark, or if IP Australia thinks anyone else would have an objection. Australian trademark registration can take time, but it is worth it.
The full process of obtaining a registered trade mark can take a bit of time but it’s well worth the wait. As soon as you file the application, you accrue further rights all the way up to registration and afterwards. It also means that during that time, you gain these priority rights which you would otherwise not have.
If all clear, then your trade mark is accepted and it proceeds to the advertisement stage for a period of 2 months, which allows others the opportunity to object to the mark if they have an objection. If no oppositions are received, IP Australia will issue a certificate of registration for your trade mark.
If there is a problem with the mark at the examination stage, IP Australia will issue an examination report gives you the opportunity to respond to the objections depending on what they are. You’ll have 15 months to resolve any issues listed in the report, and may be able to arrange for more time by requesting deferment or extensions of time.
The whole process usually takes 8 or so months but it is well worth the wait to have your intellectual property secured and you receive priority rights from the day you file the application.
If you keep using your trade mark and pay the renewal fee due every 10 years – indefinitely!
The most commonly trade marked items for most Australian businesses are the business name, logo, tag-line / slogan / by-line / slap-line, and derivative product names.