What is a trade mark?
A trade mark is the key to distinguish your business and product from others. A trade mark can be in the form of words, a picture, a logo, a sound, a smell, an animation or a combination of these. You may register your brand name (i.e. Nike), product name (i.e. Vegemite), corporate logo (i.e. David Jones) or even a slogan in your advertising materials (i.e. "Impossible is Nothing") as a trade mark.
Some business names may still be considered as being a trade mark, even if they are not registered, if they have been used in building a sufficient reputation from the business name in the past. However, only formal registration creates protection under the Trade Marks Act.
How to know if a business name has a registered trade mark?
All registered trade marks can be found by conducting searches on the Australian trade marks register.
Protecting your trade mark
It is against the law to use another person's trade mark, whether the trade mark is registered or not. If you discover anyone else using your trade mark, you may take legal action against them. However, defending an unregistered trade mark can be more difficult and expensive. Businesses should consider registering their trade marks to establish clear ownership.
How to register a trade mark in Australia?
A trade mark registration application involves the following considerations:
Determine the trade mark you wish to register (words, logo, picture or others). The trade mark must be distinctive enough to distinguish your products or business from others.Ensure that you are not registering an existing trade mark or a common or prohibited sign, word or phrase.
Think carefully about the types of goods and services you want to have protected by a trade mark. There are 45 classes of goods and services listed on the trade mark database. The more classes you choose for your trade mark, the higher your application fee will be. You will not be able to expand your list of goods and services once the application is filed.Ensure that the trade mark is owned by an eligible body (for example, under your personal name or under the name of the business).For formal approval, your trade mark application may take three to four months from the initial examination. If your application does not meet the legal requirements, then you will receive a report advising the adverse reason (for example, your trade mark might be a common phrase that could be needed by other traders) and options for overcoming such technical reasons.
Once registered, your trade mark will be listed in the Australian trade mark register. You will need to continuously use your trade mark, as an unused trade mark can be removed from the register. After registration, you may assign, licence or franchise your trade mark.
How to register a trade mark internationally?
Internationally, you may apply for a trade mark directly with each foreign country's trade mark system. Alternatively, if you have a registered Australian trade mark, you may file an international trade mark application through the Madrid Protocol system seeking protection in respect to member countries.
If you need any assistance on registering a trade mark or protecting your trade mark from being used by others, please feel free to contact our Accredited Specialists in Commercial Law, Mitchell Zadow on (03) 8561 3318.
The information contained in this article is intended to be of a general nature only and should not be relied upon as legal advice. Any legal matters should be discussed specifically with one of our lawyers.
Liability limited by a scheme approved under Professional Standards Legislation.
Mitchell is the Managing Principal of our law practice.
He is an Accredited Specialist in Commercial Law (accredited by the Law Institute of Victoria). He also deals with areas of Employment Law, Wills & Estate Planning and Probate. For further information, contact Mitchell on his direct line (03) 8561 3318.
