Registering a trade mark
Merely registering a business, company or domain name does not ensure exclusive ownership or proprietary rights over the name. Only a registered trade mark can provide you with exclusive protection.
What constitutes a trade mark?
A trade mark is a means of identifying your goods or services, allowing you to distinguish yourself from other competitors in the marketplace.
Trade marks include words, names, symbols, shapes and logos. They may consist of a simple word or phrase, or a mixture of words and other visual elements.
Trade marks provide you with a legally enforceable method of protecting your business name, product or service by allowing you exclusive use of your trade mark.
A registered trade mark:
- Can protect you from those wishing to imitate your product or brand. It can also protect your professional reputation by preventing others from trading off your success.
- May avoid lengthy and costly legal disputes should someone else trade under the same, unregistered mark.
- Provides proof of your ownership. In a dispute, the registered owner does not have to prove ownership – the onus is on the challenging party to prove otherwise.
- Can be licensed or sold like any other property.
A registered trade mark is valid for a period of 10 years, after which you can apply to renew your registration. Applying to register a trade mark forms an indispensable investment in your brand and business.
Protecting your trade mark
During the Application Process
Following acceptance, a trade mark application is advertised as accepted in IP Australia’s Official Journal of Trade Marks. The advertising period spans two months. During this time, other traders may object to your application’s acceptance, thereby commencing the opposition process.
Most commonly, opposition arises when another trader believes that your trade mark is:
- Identical to, or deceptively similar to, another registered or pending trade mark;
- Likely to cause deception or confusion for consumers of another trade mark; or
- Subject to an ownership dispute.
You may wish to challenge another trade mark registration, one which you believe infringes upon your mark. We will advise you on the cause of infringement, and liaise with both the owner of the infringing registration and IP Australia. Our goal is to assist you in amicably resolving the dispute so as to avoid commencing court proceedings.
No matter the cause of the opposition, Trademarks 101 offers a transparent package and a competitive fee structure to assist you in protecting your trade mark.
Whether your trade mark application is subject to an opposition proceeding or if you believe another trade mark may be infringing on your rights, please contact us.
Which classes should I register in?
You can only register a trade mark in the classes that are relevant to your business. However, registration protection often falls short because the owner of the trade mark only registered for the single, most obvious class.
For example: If you own a fitness centre, you may register your trade mark under class 41, for the for the provision of fitness training, fitness instruction and sporting activities. Your other class registration options include (but are not limited to):
Class 5 for goods such as dietary supplements
Class 9 for fitness videos or recordings as well as software and gadgets used in fitness
Class 28 for gymnastic and sporting articles including exercise machines and apparatus
Class 44 for the provision of medical services including physiotherapy and fitness testing
Class 25 for clothing, footwear, headgear.
Class 21, for drinking bottles for sports
We will ensure that we ask you all the right questions in our pre-application process so that we can assist you in seeking protection in the right classes!
What about protection outside of Australia?
Are you looking to trade or protect your brand outside of Australia? An Australian trademark registration does not protect you internationally, so if you’re looking for international protection, you will need to apply for an international trade mark.
To do so, you must either have a current Australian trade mark application on foot or be the owner of an existing Australian trade mark registration. If you would like to obtain an international trade mark registration, please let us know and we will provide you with additional advice regarding international applications under the Madrid Protocol.
If my logo is covered by copyright, why do I have to register a trade mark?
In terms of a logo, copyright only extends to ownership of the original design/artwork. Your copyright protection ceases when you “industrially” apply your logo to your goods and/or services.
When applying to register a trade mark you ought to ensure that your logo does not infringe copyright. If a designer has created your logo for you, you need to ensure that any copyright logo has been assigned to you in writing as payment alone does not automatically constitute a transfer of copyright.
You also cannot register a trade mark which contains stock images or illustrations. Fonts/typefaces are also subject to copyright protection, so it is a good idea to ensure that your license grants permission to incorporate the specified font in a commercial trade mark.