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Trade Mark Applications are governed by the Trade Marks Act 1995 (“the Act”) and administered by the Commonwealth government body, IP Australia (Intellectual Property Australia). This article discusses what a Trade Mark is and the application and registration process.
A. Trade Mark
A Trade Mark is what identifies your product or service in the public domain, and it is what distinguishes your product from another trader. Normally a Trade Mark is either a word, phrase, symbol, logo or a combination of these elements. More rarely, a Trade Mark could also be a sound, colour, scent or 3D Shape.
It may be beneficial for a business or trader to register a Trade Mark so that the proprietary rights to the name, logo, symbol etc can be protected. Once registered, a Trade Mark will be recorded in the Trade Marks Register, and will remain there unless renewal fees are not paid or the Trade Mark is challenged (normally on the basis of non-use of the Trade Mark).
A Trade Mark must be attached to a class of specific goods and/or services which you intend to use your Trade Mark on. In order to identify your specific goods and/or services, you must choose the class or classes which your goods and/or services fall under. There are currently 45 classes of goods and services to choose from. You should be careful when deciding which class of goods and/or services that you want your Trade Mark to cover as it is difficult to expand the classes of goods and/or services after the application has been filed.
Examples of classes of goods include: clothing, furniture, games, meat, pharmaceutical, surgical, vehicles and alcoholic beverages. Examples of classes of services include: advertising, telecommunications, education and services for providing food and drink.
B. General Criteria for Registration of a Trade Mark
The Act specifies general criteria that must be met in order for a trademark to be registrable. These criteria include:
- The Trade Mark must be capable of distinguishing your goods or services from that of other traders.
- The Trade Mark would not be likely mislead the public about the nature of the goods and services.
- The Trade Mark does not use words that are prohibited by law.
In order for the Trade Mark to be capable of distinguishing your goods or services from that of other traders, it must be unique to your trade. In other words, the Trade Mark should be something that other traders are unlikely to use in their course of business. Things like common surnames, geographical names and descriptive words would be hard to register and enforce in and of themselves.
C. Trade Mark Application
Here is a list of steps that a Trade Mark Application would generally involve:
- Doing a search on your proposed Trade Mark name on ATMOSS Australia’s database to see whether your proposed Trade Mark has already been taken.
- Deciding which class of goods and/or services you intend to use your Trade Mark on.
- If your proposed Trade Mark has not already been taken, then you can then proceed to apply to register your Trade Mark with IP Australia.
- IP Australia provides a “TM Headstart” service. The TM Headstart service assesses the registrability of your proposed Trade Mark prior to filing a Trade Mark application.
- A Trade Mark application can be made on-line or via a postal application.
D. Time Frame for Trade Mark Application
The time frame from application to registration of a Trade Mark is normally between seven and a half months to one year.
- Your Trade Mark will be examined for acceptance. This could take 3 to 4 months from the date of filing the application, if the Trade Mark examiner decides that the Trade Mark is in registrable form. If the Trade Mark examiner decides that your Trade Mark application does not meet the requirements, the applicant would be granted between 15 to 21 months (based on whether an extension is granted) to meet any requirements the registrar has identified.
- Acceptance of your Trade Mark is advertised. Your Trade Mark will be advertised in the Official Journal of Trade Marks.
- Opposition period: for three months after the advertised date; another trader may oppose the registration of your Trade Mark by filing a “notice of opposition”.
- Once a “notice of opposition” is lodged, a Registrar will need to hear the case of the opponent and the applicant. It is up to the opponent to prove that the Trade Mark should not be registered under one or more of the grounds set out in the Act.
- If no opposition is made against your Trade Mark application, or any Trade Mark application is unsuccessful, you may proceed to pay the registration fee and your Trade Mark will be recorded in the Register of Trade Marks.
- Once registered, a renewal is required every ten years.
E. Trade Mark Infringement
Once your Trade Mark has been registered, you should seek to protect it from other traders who attempt to use your Trade Mark as their own. The responsibility lies on the Trade Mark holder to enforce their rights when an infringement or a potential infringement occurs. Infringement occurs when it is proven, amongst other things, that another trader has copied the whole or a substantial part of your Trade Mark in relation to the same or similar goods (or services) for which your Trade Mark is registered.
Further, it must be established that the potential infringer’s brand is so sufficiently similar to your own to cause confusion about the origins of the products (or services) associated with the brand.
Comasters Law Firm and Notary Public is able to assist traders who wish to register a Trade Mark or protect their Trade Mark rights.
© Comasters March 2013.
Important: This is not advice. Clients should not act solely on the basis of the material contained in this paper. Our formal advice should be sought before acting on any aspect of the above information.