Send us an email if you have a trade mark question not answered below. The information below is general in nature. If you have a question concerning your specific circumstances or require any other assistance with your brand, please get in touch.
Do I need to register a trade mark to protect my brand?
In Australia, brands can be protected under the consumer laws (Australian Consumer Law) and under the common law (known as “passing off”) however, registering a trade mark gives the owner a much clearer and more cost effective means of establishing rights to the brand. When you register a trade mark you can also claim trade mark infringement under the Australian Trade Marks Act 1995. Also, registering a trade mark is the only way to gain exclusive rights to use the brand (company, business and domain name registrations do not provide such rights).
We strongly recommend registering your trade mark where possible to gain and maintain control over your brand.
What are the advantages of registering a trade mark?
- Exclusivity – When you register your name or logo as a trade mark, you obtain the exclusive rights to use the name or logo.
- Australia wide coverage – An Australian registered trade mark provides you with protection for the trade mark throughout Australia.
- A valuable business asset – A registered trade mark is property or an asset of your business. As with any property, a trade mark can be sold.
- More control of your brand – A registered trade mark allows you to license the use of your brand much easier than an unregistered trade mark.
- The right to stop others from using your brand – With a registered trade mark, you can stop someone from using your brand without authorisation more quickly and easily that without a trade mark registration.
- The right to use the ® symbol – Once your trade mark is registered, you can use this symbol with your trade mark wich puts others on notice of your rights.
How do I register a trade mark?
A trade mark is registered with the relevant government authority in each country. Once the trade mark is filed, it will be examined in each country. If there are no objections to the application, it will be accepted and published for opposition by any third party that may take issue with the application. The opposition periods vary for each country (usually 1-3 months). If no opposition is filed, the trade mark is registered. Trade marks are registered for 10 years in most countries.
How long does it take to get registered?
In Australia, trade marks take no less than 7 months to get registered. This timeframe may be longer depending on whether objections are raised during the application process or the application is opposed after acceptance.
Once I file my trade mark, can I amend it?
There are very limited circumstances where a trade mark can be amended once it is filed. This may be to correct some minor defects but anything significant (like changing the trade mark or adding goods/services) will require re-filing.
You should ensure that your trade mark application is correct before it is filed.
I understand that trade marks must be filed for “goods” and/or “services”? What does this mean?
All trade mark applications must list the goods and/or services on which the mark will be applied or used. There are 45 classes of goods and services. It is essential that the list of goods and/or services are correct at the time of filing as you cannot “add” goods/services to the application which it is filed.
I use my trade mark in colour, should I file it in colour?
In Australia, if you file your trade mark in the colour version, your rights won’t be limited to that colour unless you specifically request this limitation. We recommend however that you file the application in black and white as this will provide protection for all colours and there will be not question as to any limitation of your rights to the colour version.
What is the difference between the ® and TM?
The TM symbol lets the public know that you are claiming trade mark rights in your brand. It can be used without an application being filed, when an application is pending and also when the trade mark is registered.
Conversely, the ® can only be used when your trade mark is officially registered with the government authority in the relevant country. It is in fact an offence under most countries’ legislation to use the ® when a trade mark is not registered.
Do I need to use my trade mark once it is registered?
In Australia, a trade mark will be registered for 10 years from the filing date of the application and although there is no requirement to use the trade mark in Australia during that time, the trade mark may become vulnerable to attack for non-use. It is advisable to use your trade mark within 3 years of it being registered. Some countries have use requirements (the USA for example) and you must use your trade mark within a certain period of time or risk it being cancelled.
Should you have any other questions concerning trade marks in Australia or overseas, we would be happy to hear from you. You can get in touch with us here.