Whether you are a start-up or established company, trade marks are crucial to your business success. Registering your trade mark gives you an exclusive right to use an identifying part of your brand. It also helps you to enforce your legal rights in this mark against competitors and other businesses. This article sets out the trade mark registration process to help inform and protect your business.
What is a trade mark?
A trade mark is a way of identifying your business. It protects your intellectual property rights in a unique aspect of your business, such as a logo, word, colour or phrase. Trade marks are similar to your brand, and are used to distinguish the goods and services of your business from those of your competitors. As your business success increases, so does the value of your trade mark or brand.
Why do I need to register my trade mark?
Registering your trade mark gives you exclusive rights to use, licence and sell an identifying aspect of your business. It also helps you to enforce your legal rights against competitors and other businesses if they are looking to use or register a similar trade mark to you.
Registration is crucial to help prevent trade mark dilution, which occurs where other businesses use a similar mark as yours to the extent where your trade mark is no longer unique or valuable to your business.
What is the trade mark application process?
Applying for a trade mark can be a complex process, so it is important to seek professional legal help to avoid costly mistakes. However, below are some key steps.
1. Make sure you have a registrable trade mark
There are many types of intellectual property rights, including copyright, designs, patents and trade marks. Each has a different process for protection, so it is important to ensure you have the right one. Making the wrong choice can lead to unwanted costs, as trade mark application fees are generally not refundable.
It is also a good idea to conduct a detailed search for any trade marks which are similar to yours. These might be trade marks which are already registered or in the process of registration. By conducting a thorough search beforehand, you can avoid infringing on someone else’s intellectual property rights. It also saves you the time and money of applying for a trade mark, only to have it rejected later due to opposition.
2. Decide on your goods and services.
Trade marks protect an identifiable aspect of your business in relation to classes of goods and services. When you register a trade mark, you need to provide a description of the goods and services you intend to use your trade mark for. This can be done using the picklist on IP Australia, or by using custom descriptions.
Your description must be detailed and cover all the goods and services your trade mark intends to cover. There are over 60,000 goods and services from the IP Australia picklist alone, and it can be helpful to speak to a lawyer if you are unsure of which to choose. If you make a mistake or forget to add some goods and services, you will not be able to change your list after filing the application without additional fees.
3. Submit your application
Applications can be submitted online and will require a filing fee, representation of the trade mark, contact details of the applicant and list of relevant classes.
How long does it take to register my trade mark?
Once a trade mark application is submitted, it will be examined by IP Australia to make sure it contains accurate information and meets the legal requirements. If the application does not meet these requirements, IP Australia sends a report to the applicant explaining problems with the application. Sometimes these can be easily overcome, such as by changing the descriptions of goods and services, but other problems may require more specific solutions. It is helpful to talk to a legal professional about how issues in your trade mark application can be best addressed.
If the trade mark application meets all the legal requirements, it is advertised in the Australian Official Journal of Trade Marks for two months. During this time, third parties can oppose the registration of your trade mark. If there are no oppositions to your trade mark, it will be registered and IP Australia will notify you of this.
What protection does a registered trade mark give me?
Registering your trade mark with IP Australia gives you exclusive rights to use, sell and licence whatever you have marked. Once registered, your trade mark is valid for 10 years, and you can apply to renew it before expiration.
While registering your trade mark is an important first step towards protecting your intellectual property rights, trade marks require constant supervision to help prevent infringements in the competitive marketplace. In addition to registration, businesses can protect their trade mark by:
- Engaging a trade mark watching service to constantly supervise your trade mark;
- Adopting a clear infringement strategy for your business which sets out how to deal with any potential breaches of your intellectual property rights
- Seeking advice from a legal professional about how to safeguard your brand.
- Trade marks protect a unique identifying part of your business such as a logo, word, colour or phrase. They distinguish the goods and services of your business from others.
- Registering your trade mark is an important initial step towards protecting your intellectual property and brand. It can help you enforce your legal rights against competitors.
- Applying for a trade mark can be a complex process. Businesses may wish to seek a legal professional to help with their trade mark application to reduce the risk of complications and additional fees.
Gladwin Legal are experts in advising businesses, from start-ups to established companies. If you require assistance with your trade mark application or advice on protecting your brand, please contact us at or 1300 033 934.