Disclaimer

Overview

Trade mark registration in Australia will allow you to prevent competitors from using and registering your trade mark.

A trade mark registration generally provides legal rights across Australia.

Overseas Applications

It is possible to file a trade mark application in a convention country up to 6 months after first filing a trade mark application in Australia and to claim priority from the Australian trade mark application.

Australia is a member of the Madrid Protocol. This allows for the centralised filing of overseas applications and the centralised renewal of overseas registrations in a number of Madrid Protocol countries, including the US, Europe and China. Further information regarding filing applications overseas is available on request.

Ownership

The first person to use a trade mark in Australia is generally the owner of the trade mark. Ownership extends to goods and services of the ‘same kind of thing’ in respect of which the trade mark has been used.

Registering a trade mark is considered to be use of the trade mark and prima facie evidence of ownership of the trade mark. In some cases there may be more than one registered honest concurrent owner of a trade mark, where each owner has a registration in respect of the same or similar goods and services. To be an honest concurrent owner you must have adopted the mark in good faith and have substantial use of the mark.

Term of Protection

When a trade mark application is filed in Australia, 6 months of provisional trade mark protection is provided in all convention countries.

Trade mark renewal fees for an Australian trade mark registration are payable every 10 years.

Representations

Trade marks usually comprise word marks or device marks. There are other types of marks such as certification, sound, scent and colour marks. These other types of marks have much more onerous registration requirements.

It is advisable to always file a word mark and optionally to file a device mark. Each application should cover the goods and services in connection with which the mark is intended to be used.

Goods and Services

It is possible to protect both goods and services. For example, a baker who makes specialty cakes may apply for a registration covering goods comprising cakes, as well as services comprising selling cakes. In this manner a registration will protect the mark applied to cakes, as well as franchises and retail outlets using the mark as part of their name.

Is evidence of use required?

Evidence of use may be required if there is already a similar trade mark registered in respect of goods of the same description or closely related services. Evidence of use may also be required if the mark has a descriptive character. 

How involved is the process?

The process usually involves conducting a preliminary search, filing an application, responding to an examination report and attending to registration fees. Please contact us if you require a flowchart with cost estimates.

How much information is required?

In order to provide a trade mark filing strategy we require sufficient details of your business to allow us to formulate a specification of goods and services. In addition, we require details of the marks and packaging used along with any slogans. This information will allow us to prepare a trade mark filing strategy.

Why should I use a trade mark attorney?

A trade mark attorney will be familiar with the types of objections that could be raised during examination and will be able to respond appropriately to ensure that your rights are not prejudiced.

In addition, a trade mark attorney will be able to provide a filing strategy covering such matters as: (i) whether applications should be filed in plain or graphical font with or without a logo; (ii) whether the specification should cover both goods and services; (iii) whether objections are likely to be raised during examination; (iv) whether evidence of use is likely to be required; and (v) whether it is advisable to perform a preliminary trade mark search. A trade mark attorney will also be able to provide advice covering the various procedures available and issues involved with extending your application to overseas jurisdictions.

What could happen if I don’t register my trade mark? – Best-Case Scenario

Assuming a best-case scenario, no one copies your trade mark or uses a similar trade mark in Australia or anywhere else in the world. As a result, you can advertise and use your trade mark in Australia and extend your operations to overseas countries as your business expands without having to change your trade mark.

What could happen if I don’t register my trade mark? – Worst-Case Scenario

Assuming a worst-case scenario, another party is already using your trade mark or a trade mark similar to it in Australia and has a trade mark registration. The other party sees you using your trade mark and sends you a ‘cease and desist letter’ demanding that you stop using the trade mark and pay for damages to the other party’s business. By this time you have invested considerable sums in branding and advertising and could lose revenue if you change your trade mark.

Unfortunately, your only options are to ignore the letter (which could result in the other party taking you to court) or to change your trade mark. The first option is generally not advisable as it is likely to involve court costs in addition to you ultimately having to change your trade mark. The other party may have also registered several domain names that are presently driving clients away from your website. In addition, the other party may have registered their trade mark in overseas countries, thereby limiting expansion of your business.

What could happen if I don’t register my mark? – Better-Case Scenario

A better-case scenario is that you were using your trade mark well before: (i) the other party started using their trade mark; and (ii) registered their trade mark. In such a case you could defend any legal action taken by the other party on the basis that you are the true owner of the mark in that jurisdiction or, at least, are a prior user of the trade mark. In such a case the other party would most likely oppose any action you take to jointly register your mark and may even still take legal action. Removing the other party’s registration will typically be difficult and costly due to concurrent user provisions. Notably, some countries such as China do not recognise prior user rights.

Links

IPAustralia: Australian Patent Office

http://www.ipaustralia.gov.au/
 

The Australian Patent Office website provides information on Australian trade marks and the Madrid Protocol. The website provides access to the trade marks database. The trade marks database can be searched by owner, trade mark, kind and date. 

 

OHIM: Office for Harmonization in the Internal Market

http://oami.europa.eu
 

OHIM is the official trade marks and designs registration office of the European Union. The OHIM website provides information on the Community Trade Mark (CTM) covering 27 member states of the European Union. The website allows searching of the CTM database.

 

USPTO: US Patent Office

http://www.uspto.gov/
 

The United States Patent Office website provides information on US trade marks. The website allows searching of the US trade marks database.

 

Wikipedia: Trade Marks

http://en.wikipedia.org/wiki/Trade_marks
 

The Wikipedia section on trade marks provides some useful information including information on the use of trademarks.

 

*As with all information provided by this website, the content of this webpage is subject to our disclaimer. The material provided is not to be relied upon under any circumstances.