Frequently Asked Questions
This is the most common of our frequently asked questions. A registered trade mark is a legally-enforceable intellectual property right granted by the government to the recognised owner.
The trade mark itself is a ‘sign’ (usually a name, a logo or a combination of the two) that helps customers identify your goods and services so they can tell they’re getting the genuine article.
We suggest that you contact us for a no-obligation consultation.
Before someone else beats you to it! Granted, in Australia the owner is the first person to use the trade mark. But in China, it’s the first person to register it. Other countries vary. That’s why it’s so important to get your trade mark sorted out early, and to do a good search to see if anyone already has a similar mark. It’s not prudent to assume that you can go back and fix up a trade mark after you’ve already started trading.
No – not at all. Only a registered trade mark can prevent unauthorised use by others.
Your business name registration may be a statutory requirement in Australia, but it confers no legally enforceable intellectual property right to use that name. In that respect, you can’t use it to prevent others from using your name. And if your business name infringes someone else’s trade mark, then they could force you to stop using it.
Likewise, domain name registration doesn’t give you a legally enforceable intellectual property right to use that name.
Of course, you can register your business name (or even your domain name) as a trade mark, so long as it meets the requirements of the Trade Marks Act 1995.
With the advent of the internet and the global economy, brands have become an increasingly valuable business asset. Trade mark registration is arguably the most effective way to build and protect your brand in today’s markets – be they local, national or international.
A trade mark helps you make money because your customers can easily identify your product or service when they’re in the market to buy. A registered trade mark also gives you the right to stop others from using similar trade marks to lure your customers away. Perhaps more importantly to new companies, having your own registered trade mark prevents you from being sued for infringement.
Your trade mark is a business asset. You can sell or license it, which could potentially bring you an income stream even after you retire. You can also use it as a form of security. It will add to your business’s value if you eventually decide to sell your company.
A good trade mark will increase in value as your business grows over time.
In the modern economy, trade marks and their associated goodwill may turn out to be your largest asset. This is especially true for the services sector, and for marketing-savvy businesses.
By registering your trade mark, you block any competitors from registering or using it. Otherwise, one of them could potentially apply to register your brand as their own trade mark. You’d have an expensive time resolving that – or maybe even have to rebrand, and risk losing your position in the market.
Registering your trade mark gives you exclusive rights to sell certain goods and services under that trade mark. You can control the use of your brand, and stop others from using it.
Your registered trade mark also places the public on notice of your rights. That tends to be an effective deterrent for would-be infringers. At the same time, in Australia registration also provides an initial defence if others accuse you of infringing their trade marks.
It’s much easier to stop counterfeiters if your trade mark is registered. Without registration, taking action against counterfeiters would require you to prove misleading and deceptive conduct or passing off. This is often both difficult and costly (in terms of money and time).
The registration process itself can reveal existing trade marks that you might accidentally infringe. This gives you time to take corrective action and avoid a costly dispute.
The first basic requirement is that your proposed trade mark must be able to distinguish your business (within the relevant class of goods and services) from other traders. Your application won’t succeed if your proposed trade mark is something that fair-minded businesses would want to use (for example a descriptive word, a geographic name or a common surname).
The second basic requirement is that your proposed trade mark can’t be too close to other trade marks (eg registered trade marks, live applications, or businesses with known reputations).
It’s possible to get past these requirements if you’re already using your trade mark and can prove that you have a reputation in your market. However, that’s an expensive and potentially tricky job. It’s far easier (and less expensive) to simply choose a trade mark that fits the two basic requirements above.
There is no exhaustive or prescribed list in the Trade Marks Act 1995. Words and logos (or combinations of them) are the most commonly registered trade marks. It’s also possible to register letters, phrases, pictures, shapes, packaging or combinations of these. It’s relatively uncommon (but still possible) to trademark colours, sounds and scents.
Ideas that are too close to existing trade marks; words that merely describe your goods or services; place names; generic words; expressions common in your trade; things that are offensive; and items regulated under legislation (eg the Olympic insignia). There are others, but this should give you the picture.
The application process deserves an entire page of its own. You’ll find it here.
Yes, you do.
‘Search’ is our opportunity to find out whether your proposed trade mark is actually available to register or use.
If you’ve decided that you need a trade mark, then you need a proper search before you pay non-refundable Trade Mark Office fees. If you believe you don’t need a trade mark, it’s arguably even more important to do a thorough search before you start trading under your brand. Otherwise, you risk infringing someone else’s trade mark. If so, you won’t have a defence. (That’s why we also offer to do trade mark searches as a completely separate stand-alone service.)
Searching is a fine art. Some applicants might be tempted to just do a quick scan of the Register of Trade Marks, leave the extended search to the Trade Marks Office, and accept the risk of having an adverse report or refusal. Not us. Our aim is to get you through the entire registration process without giving anyone a legitimate reason to object to your proposed trade mark. We build a thorough search into our fixed-fee packages, and offer only thorough searches as a stand-alone service.
That said, not even the most thorough search leads to a completely certain outcome. That’s because there can be a considerable degree of subjective interpretation when trying to decide if one brand is too close to another. Still, better to have that knowledge before the application is filed, not after.
This is an area where your trade mark attorney’s advice can make quite a difference. There are a number of issues we would need to look at.
For example, does your proposed trade mark already have a reputation in your market? Are the owners of the other brand operating in the same class of goods and services as you? Are they actually ‘using’ the trade mark, as defined in the legislation? Is their mark virtually identical to yours, close, or . . . line ball? Are you in a position to tweak your proposed mark, or even change it? Can you afford to take them on before the Registrar of Trade Marks?
Depending on your circumstances, we’ll be able to provide sensible advice tailored to your actual needs.
A class sets out the goods or services your trade mark will apply to. Once again, this is where early advice from your trade mark attorney can save you a lot of bother later on.
Choosing classes is a matter of (a) understanding your business and (b) striking a suitable balance between cost and coverage. Too many classes, and you’re wasting valuable money. Too few classes, or the wrong ones, and your trade mark is under-protected. And while a small conventional business may be able to rely on the IP Australia ‘pick list’, a ground-breaking start up might need a bespoke class specification drafted by a trade mark attorney.
We’ll look at your circumstances and give you sound advice.
Sure, it’s possible to reduce the scope of the classes in your application, but once your trade mark is filed, you can’t add goods or services or materially alter the proposed trade mark itself. If you need to do that, you’ll have to re-file and pay the fees all over again. Likewise, if you later need to expand the goods and services that your trade mark applies to, you’ll need to file an entirely new application for your trade mark.
That’s why it’s important to try to get it right up front. You may also find that it’s worth spending a bit extra on classes at the beginning of the application rather than having to do an entirely new application later.
We do understand how hard it is to compare different firms’ offers! Especially when others generally oblige you to pay extra for unavoidable government fees, GST, and foreseeable (but additional) services.
To cut through all of that, we’ve done our best to provide a clear and comprehensive explanation of costs on our Services and Fees page. This includes some fixed-fee options that we’re very proud of; our fixed fee is what you’ll pay to get the job done, not just to get it started.
In general, it’s reasonable to allow around 12 months for uncomplicated applications.
It takes a minimum of seven and a half months from the date you file an application until your mark can be registered in Australia. No faster, because international treaties mean IP Australia has to allow time for overseas applications to be dealt with.
Beyond that, other factors include how busy the Trade Marks Office is, and whether an examiner or trade mark owner takes issue with your application. The timeline can blow out considerably if an application isn’t tightly drafted.
Under some circumstances it’s possible to request an expedited examination – but the expedited answer may still be ‘no’.
After you file a trade mark application, the Trade Marks Office (at IP Australia) will assign an examiner to see if it complies with the Trade Marks Act 1995. If the examiner believes there’s something wrong, or needs clarification, you’ll be sent an Adverse Report.
These are fairly common. They’re not necessarily a big deal, but if the application is seriously deficient then a trade mark may be refused. The most common major objections are that a proposed trade mark doesn’t actually distinguish the brand from others, or is too close to existing marks.
Engaging a trade mark attorney is one of the best ways to avoid falling into the first of those traps. Our thorough trade mark searches aim to avoid the second one.
If an examiner nevertheless raises an objection, you’re still entitled to argue your case. We can provide a legal argument on the facts of the matter. In some cases, we might need to submit evidence that the proposed trade mark already has a meaningful reputation in the market. It may sometimes be necessary to adjust the goods or services included in the specification.
Once the Trade Marks Office is satisfied that your application meets the legal requirements, they ‘accept’ it. But that’s not the end of the process!
Next, the public is invited to register any objections they may have. Not many take the option, but it does happen.
There are actually a large number of grounds on which someone might object to your application, but our main focus is on making sure that the proposed trade mark isn’t too close to an existing mark. This is one more reason why we’re so adamant about providing a thorough search in the early stages of an application – we don’t want to cause anyone to object.
Beyond that, we do our best to anticipate possible objections to your brand and head them off in the earlier stages, when it’s still possible to make changes to your draft application.
With a few exceptions, once your trade mark is registered it’ll be backdated to the day that the Trade Mark Office received your application. Your trade mark will be protected from that date, including protection from any applications that may have come in while yours was being processed.
It can last indefinitely, so long as the registered owner of the mark uses it (in the context of the legislation) and pays the renewal fees. We’ll send you a reminder and are happy to handle the paperwork.
Your mark is valid where it’s registered. If registered only in Australia, then it’s not valid overseas. There’s no such thing as an international trademark, although at that link we discuss in detail how you can secure your rights overseas.
For example, there are procedures available under the Madrid Protocol to extend your Australian application to overseas jurisdictions if you act within six months. It’s also possible to file an application with them directly. Just let us know.
IMPORTANT: if you intend to operate in China, specialist advice and early action is essential. Get in touch with a trade mark attorney before you let any business outsiders know your plans.
It’s entirely the responsibility of the owner of the trade mark – but we’re here to help.
We offer new clients a monitoring service to catch potential infringement early, before it can get out of hand. It’s one of those situations where you really do want that ounce of prevention.
The alternative could turn out to be a risky, complicated legal action with unpredictable outcomes. You don’t want that, and we can help you avoid it.
If you’ve been granted your trade mark (or have already filed it) and they haven’t been using their mark for a long time, you’re in a strong position.
It’s important to use an attorney in these matters, because the law doesn’t protect you from legal action if you threaten someone (intentionally or not) with legal proceedings.
Subject to our discussions with you, we would generally send a Cease and Desist Letter (‘Letter of Demand’). And, although we’d expect that to work, there is also the option of seeking relief in court.
Five years from the date you filed your application, the government will listen to any challenges to your trade mark on the grounds of ‘non-use’. If challenged, you must be able to show that the owner of the mark has used it as a trade mark at some point in the preceding three years. Please note that this means (a) it must be ‘used’; (b) as a trade mark; (c) by the owner. We will help you understand what this really means, and provide advice about how to protect your trade mark from non-use actions.
Thanks for reading – we hope these trade marks frequently asked questions have been helpful.