Trade marks

Trade Mark Registration

ClarifisIP are well versed in the trade mark application process. For small and large businesses, protecting a trade mark is the protection of what is often the businesses most valuable asset – the brand.

Our trade mark attorneys take great pride in representing your interests and protecting your brand and can assist you right through the trad mark registration procedure including:

  1. Filing your application;
  2. Handling objections raised by examiners;
  3. Correctly classifying goods and services contained on the trade mark specification; and
  4. Defending opposition proceedings

Learn more about trade marks:

 

Applying for a trade mark

What is a trade mark?

A trade mark in a nutshell is an indicator of source. This can be in the form of a logo (a sign), a sound, a smell (a scent), a colour, a shape or even a movement. Regardless of the form of the trade mark, there must be an association between the particular mark and the goods or services of the owner. Above and beyond all else, the trade mark must distinguish the goods and services of the holder from that of other traders.

For example, popular trade marks include:

  1. The Toyota ‘Star Jump’
  2. The Boost Juice ‘Boooost’ sound used in radio commercials
  3. The logo for Ferrari Cars

Typically, for most businesses the name of the business and sometimes the product lines and service lines are the relevant marks worthy of protection in the business.

How much does a Trade Mark Cost?

To register a trade mark there are several types of fees payable. The first component of fees relate to statutory charges which are incurred by IP Australia in connection with registering a mark. The fee depends on the number of classes your trade mark is registered under so the broader your application, the higher the cost.

At present IP Australia fee per class for each trade mark is $250 when classes are selected from a pick-list and $330 when the specification is drafted manually however different fees apply for series registrations or more complex applications.

The second type of fee payable in relation to an application is professional fees for your attorney. Ensuring you seek advice from a qualified Trade Marks Attorney often saves time and money in the long run compared to filing on your own.

Accordingly, Clarifis IP levies professional fees on each application which can be obtained by contacting us.

 

Do I need to register a trade mark and what advantages are there in registering a mark?

There is not requirement under law to register a trade mark, in fact if you have an existing business with an existing reputation the chances are you already have a trade mark of kinds which will be subject to certain protections at law irrespective of whether it is registered or not.

Registering a trade mark however provides key advantages over unregistered marks:

  1. The ownership is certain: Unlike common law marks (marks that are unregistered) registered trade marks are listed on a Commonwealth Register of Trade marks which can be referred to by the general public – accordingly the ownership of a particular mark is inherently clear.
  2. There is no need to prove rights to the mark in disputes: In the event of trade mark infringement, having a registered trade mark means that the ownership of the mark is automatically assumed at law whereas unregistered rights holders may have a difficult time demonstrating the original development and use of the mark
  3. Enforcement is often easier: Given that a registered trade mark is a statutory right enshrined on a formal register, infringing parties are often less likely to entertain a dispute and will instead cease infringing activities for fear of significant damages.
  4. Nation-Wide Protection: An unregistered mark provides protection Australia Wide versus an unregistered mark which may have acquired a reputation only in a particular area for instance.
  5. Customs Protection: The Australian Customs and Border Protection Service (Australian Border Force) provides a protection mechanism to prevent counterfeit goods from being imported into Australia for registered trade mark holders (for instance fake Gucci handbags).

Finally registered trade marks may be licenced (leased) and assigned (sold) just like tangible property.

 

If I have a business name, how come I need to register a trade mark?

Under Commonwealth Law (Business Names Registration Act 2011 (Cth)) A business must register a business name if they intend to conduct business activities under a name other than the name of the entity itself (ie. an individual or company name).

The registration of a business name confers no rights to the name and is merely a requirement to allow for the administration of names used in the course of business in Australia.

Only through trade mark rights does an entity acquire rights in a name, including a business name.

Ultimately, there is no requirement to register a trade mark if you have a business name and some names which qualify for registration as a business name may not qualify for registration as a trade mark – nonetheless to ensure protection over the use of the name it is highly recommended that a registered trade mark application be pursued in most instances.

 

How long does it take to register a trade mark?

Trade marks which are unopposed and do not face objections from an examiner at IP Australia generally are granted at around six months from filing, this assumes all fees are paid at the time payment is requested and that there are no issues with the mark in a legislative sense.

If an objection is raised, the applicant has fifteen months from the date of the objection being raised to overcome the objection – despite common theory, this does not mean you have fifteen months to respond – the objection must be overcome through evidence or otherwise by this time.

Oppositions can also extend the time it takes for a mark to be granted.

Overcoming objections

 

What kind of objections may I face when applying for a trade mark?

Trade Mark Law is an advanced area of law.  The Trade Marks Act 1995 (Cth) provides for certain restrictions on registration, some of the most common objections raised include:

  1. Lack of inherent adaptiveness to distinguish: This objection is raised under s 41 of the Trade Marks Act 1995 (Cth) when generic or very simple marks are registered that other traders may need to use in the course of business.
  2. Conflict with another mark: This objection is raised under s 44 of the Trade Marks Act 1995 (Cth) and occurs when the examiner believes your mark is too similar to other marks on the register.
  3. Misleading or Deceptive Mark: This objection under s 43 of the Trade Marks Act 1995 (Cth) may be raised when your mark is likely to deceive or cause confusion.

How should I overcome objections raised by IP Australia examiners

Overcoming objections is achieved by tendering both evidence and arguments to the examiner handling your application at IP Australia.

Most objections must be met with certain criteria before they can be overcome – for instance:

  1. You may be required to submit evidence of past use;
  2. You may be required to demonstrate that trade marks have been used concurrently in the course of trade without issue; or
  3. You may be required to submit a declaration to indicate the time at which you first used the mark in the course of trade.

Depending on the complexity of the issue at hand, consulting a professional such as a Registered Trade Marks Attorney is often the easiest way to resolve the issue.

 

Ensuring continuous registration

 

After my trade mark is registered what do I need to do to ensure it stays protected?

The registration of a trade mark does not guarantee endless protection, rights holders have a responsibility to uphold and enforce the inappropriate or unlawful use of their trade mark – for instances in cases of infringement.

Additionally, trade marks are a statutory right which is granted for a period of ten years and then subsequent periods of ten years. Without making payment for renewals upon the end of a ten year period, the trade mark will lapse and will subsequently be unprotected.

Finally, if a trade mark ceases to be used for a period of time, it may be vulnerable to non-use actions by other parties who may wish to use the mark. In these instances, it is important to seek professional intellectual property advice to overcome such attacks.

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