Examples of well known trade marks are the McDonald’s ‘golden arches’ logo, the words “Coca Cola” and the specific shade of purple used by Cadbury in their chocolate packaging.
Contrary to common belief, not all trade marks are registered, and while registering a trade mark gives legally enforceable, exclusive rights, a trade mark can arise at common law. A common law trade mark is an unregistered trade mark that has been used to the extent that it is widely recognised as being associated with the goods or services of the owner.
What are the benefits of registering a trade mark?
If you use a distinctive sign in your business, you should consider registering it as a trade mark, whether that sign is a word, a phrase or a logo. Simply registering a business name or company name or domain name does not give the registrant a proprietary interest in that name – you cannot automatically prevent other people from using that name in their business.
By registering a trade mark in Australia, an owner will receive an Australia-wide monopoly to use (and to license) that trade mark in respect of the goods or services in which registration was granted. It is far easier and more cost efficient to prevent other people from using the same or similar trade mark in Australia when a trade mark is registered.
Registration also establishes a registered property on the public record that can easily be licensed, sold (or even mortgaged).
Finally, registration of a trade mark offers a complete defence to a claim of trade mark infringement brought by another trade mark owner.
How do you register a trade mark?
Trade marks in Australia are regulated by IP Australia. Registration of a trade mark is a multi-stage process that generally takes between 9 – 12 months from application to registration.
The trade mark can still be used during the process, and the registration will be effective from the application date.
Broadly speaking the process involves:
- determining the classes of goods and services in which you are seeking protection;
- undertaking preliminary searches to establish whether there is a similar trade mark to the proposed trade mark;
- filing an application with IP Australia and paying the application fee;
- IP Australia examining the application to ensure it satisfies the legal criteria relating to registration;
- dealing with any objections to the trade mark brought by IP Australia;
- advertising in the official journal;
- dealing with any third party opposition to the trade mark brought within two months of the advertising date;
- paying the registration fees.
What do the ® and ™ symbols mean?
The ® symbol means ‘registered trade mark’. It is only lawful to use this symbol in connection with a registered trade mark in conjunction with the specific products and services outlined in the registration, and it cannot be used while an application is pending.
The ™ symbol means ‘trade mark’ and can be used freely in relation to registered an unregistered (common law) trade marks.
There is no requirement to use either symbol in connection with a trade mark, although they assist consumers (and competitors) identify and recognise your intellectual property.
Can I register my trade mark overseas?
Australia is a party to the Madrid Protocol, which is administered by the World Intellectual Property Organisation and establishes a streamlined process to register a trade mark in other countries. An international registration granted in a member country will give the same protection in that country as any other trade mark registration. Other countries that are parties to the Madrid Protocol include Japan, China, Singapore, the US and the EU.
What should I do next?
If you are interested in trade marking, or have a query about intellectual property and your business generally, please contact one of our commercial team today.
Contact us on (07) 5606 7332.
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