Get professional advice to solve your trademark issues.
The easiest way to register a strong, enforceable trademark is to engage a trademark attorney. Trademark attorneys are registered with (and recognised by) the Australian government. They’re specially qualified to do trademarks work.
A registered trademark attorney can help you with trademark advice, trademark searches, and registering your trademark in Australia. You can also get advice and help resolving trademark infringement and enforcement matters.
Most trade mark attorneys offer other related services as well. Plus advice on matters such as parallel imports, which affect many small businesses.
WHAT IS A TRADEMARK ATTORNEY?
A trademark attorney is professionally qualified to advise you about trademark law matters. In Australia, trademark attorneys are registered by the government. Only persons on the official Register of Trade Marks Attorneys are entitled to call themselves a trademark attorney.
They operate under a professional code of conduct and are bound by fiduciary duties. Their qualifications require specialisation in the legislation, common law and case law relating to trademarks.
That’s why clients often favour a trademark attorney over a general practice solicitor. After all, your family lawyer is unlikely to be deeply familiar with this specialised and constantly evolving field.
That said, attorney firms don’t litigate in their own right. If it’s necessary to go to court, a trademark attorney will usually refer the matter to a specialist intellectual property litigation firm.
DO YOU NEED A TRADEMARK ATTORNEY?
In essence, there are two risks that you take when you file your own trademark application instead of engaging a trademark attorney.
Start your obligation-free consultation now. It’s the first step toward registering your trademark.
Please take a minute to tell us about the brand or logo you’d like to trademark, and we’ll get back to you with initial advice about how you might want to proceed.
The first risk is that you won’t recognise basic problems with your trademark application. Problems that will cause the Trade Marks Office to reject your application. This can be costly in both time and money.
You will probably not have the legal knowledge needed to overcome their objections. And the Trade Marks Office won’t refund your fees.
You have a much better chance of avoiding this situation by engaging us to advise you on your options, and help make the system work for you.
The second risk of ‘DIY’ is that even if you do get a trademark registered, it may not be strong enough to properly secure your brand.
There are a number of legal issues which people routinely get wrong. Unfortunately, the only way they find out is when they need to use their trademark rights against a competitor with a similar brand.
It’s best to avoid this situation in the first place. And that’s where a trademark attorney’s knowledge really pays off. Getting the initial application right will save you the cost of re-filing the mark, and help ensure that potential competitors can’t exploit any oversights in your trademark later on.
Again, we look forward to helping. You can get started with a free trademark search.
A Simple ‘Device’ Mark –
Nike’s Famous Swoosh Logo
HOW TO CHOOSE A TRADEMARK ATTORNEY?
Is your advisor a registered trademark attorney?
At Acorn Trade Mark Attorneys, your advisor will be a registered trademark attorney.
Who will actually do your trademarks work?
Likewise, your trademarks work will be done by a registered trademark attorney.
Will you have a clear picture of costs?
To the extent possible, we provide fixed-fee services. We’ll provide you with options, and consult you before beginning any work.
Will your trademark attorney be responsive and keep you up to date?
We’re happy to talk to you by email, Skype, phone – pretty much whatever you find most convenient. We provide information about the trademark process in advance. Then we email updates whenever meaningful changes occur. We’ll also send a monthly general-purpose update when a trademark matter is underway.
WHAT QUALIFICATIONS ARE REQUIRED TO BE A TRADEMARK ATTORNEY?
The academic qualification requirements are set out in Regulation 20.5 of the Trade Marks Regulations 1995.
The qualification should be:
- a Level 5 or higher Australian Qualifications Framework (AQF) qualification; or
- a qualification awarded by an overseas institution that the Board is satisfied is equivalent to a Level 5 or higher AQF qualification.
WHAT ARE THE PERSONAL REQUIREMENTS FOR TRADEMARK ATTORNEYS?
Section 228A of the Trade Marks Act 1995 provides that a trademark attorney must:
- hold such qualifications as are specified in, or ascertained in accordance with, the regulations;
- be of good fame, integrity and character;
- not have been convicted of a prescribed offence during the previous 5 years;
- not be under sentence of imprisonment for a prescribed offence; and
- meet any other requirements prescribed by the regulations.
Regulation 20.10 of the Trade Marks Regulations 1995 lists the prescribed offences for trade marks attorneys.
A ‘Composite Mark’ –
Target’s Trademarked Logo
HOW DOES THE TRANS‑TASMAN IP ATTORNEYS BOARD SELECT TRADEMARK ATTORNEYS?
The ‘Board’ considers applications for approval of academic qualifications at each of the three meetings it holds each year.
Applicants are required to submit their academic qualifications for approval. The Board determines whether the requirements are met.
The Board Secretary takes applications for consideration at these meetings up until a month before the next meeting date. Late applications are not accepted and will be held until the next board meeting.
TRADEMARK ATTORNEY PRIVILEGE
Once the Board has officially registered a trademark attorney, the attorney is entitled to the benefits of statutory client-attorney privilege. This ensure that clients are able to communicate freely with their trademark attorney. The information the clients provide can’t later be used against them.
The Golden Arches Logo –
HOW DO YOU REGISTER A TRADEMARK IN AUSTRALIA?
The Australian Trademark Registration Process
The first step is to do a trademark search. That’s our opportunity to find out whether your logo is actually available to register or use. Searching is a fine art.
Assuming the search is favourable, the next step is to file a trademark application for your logo with the Trade Marks Office. Our trade mark attorneys will work with you on this. It’s important to correctly specify the classes of goods and/or services that relate to your brand. This ensures your trade mark protection is not too narrow, not too broad, and no more expensive than necessary.
After filing your application, the Trade Marks Office will examine it. They check to make sure the application’s in accordance with the trademarks legislation.
If they find any issues with the application, the Trade Marks Office will issue an ‘adverse report’. To overcome those issues, we would then prepare and file submissions or amendments on your behalf.
If there are no objections, or if the objections are satisfactorily overcome, the Trade Marks Office will accept your application. Then they publish (‘advertise’) it online in the Australian Official Journal of Trade Marks. This begins the two month opposition period. Members of the public then have the opportunity to raise any issues with your logo. Assuming this goes well – and it usually does – the trademark for your logo will be officially registered in Australia.
The overall process from filing to registration takes at least seven and a half months. That’s because of our international treaty obligations. Afterward, the trademark for your logo can be maintained as long as you continue using it. You’ll need to pay the renewal fees every 10 years.
[Here’s a more detailed explanation of the trademark application process.]
WHAT ARE THE REQUIREMENTS TO REGISTER A TRADEMARK?
Trademark registration is governed by the Trade Marks Act 1995, the Trademarks Regulations 1995, and Australian case law. The Trade Marks Office (at IP Australia) is the regulator that examines Australian trademark applications.
For present purposes, let’s assume the logo in question isn’t ‘scandalous’, forbidden from registration or otherwise contrary to law.
The first basic requirement is that your proposed trademark must be able to distinguish your business (within the relevant class of goods and services) from other traders. You won’t be able to register your trademark in Australia if your proposed mark is something that fair-minded businesses would want to use (for example a descriptive word, a geographic name or a common surname).
Not Be Deceptively Similar
The second basic requirement is that your proposed trademark can’t be too close to existing trademarks. That includes registered trademarks, applications currently being considered, and the marks of businesses with very well-known reputations. However, if those trademarks are in completely different industry sectors, you may be still be able to trademark your logo. That’s how Apple (Computers) managed to get a trademark even though Apple (Records) already owned a registered trademark for that name.
The Apple Computer Logo
The Apple Records Logo
It’s also possible to get past these requirements if you’re already using your trademark 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 trademark that fits the two basic requirements above.
Under Australia’s trademark legislation, the first applicant to use a mark is entitled to ownership of the mark. If challenged by another trademark owner (or vice versa), you may have to prove that you were the first to use the mark in question.
HOW ACORN TRADE MARK ATTORNEYS CAN HELP
Whether you’re testing the waters with our free trademark search, or are ready to register your trademark in Australia, we can help with quick, easy and budget-friendly trademark services.
Naturally we’d be glad to have a chat about any other questions you might have about trademarking your logo. If so, just use the quick contact form below, or visit our free consultation page. Let us know your questions, and we’ll get back to you directly.