'Australian Trade Marks 101'

Tuesday October 7, 2014

The below article has been provided by Heilala Tabete, Associate and Kathleen Watt, Lawyer, Corney & Lind Lawyers.

What is a trade mark? And why do you need to register one?

A trade mark is a badge of origin or business brand. You use your "badge" to identify your goods and services as coming from you. Many businesses commonly use unregistered trade marks in the market place.

In the start up of any business, it is advisable to register your business brand as a trade mark. This may be your business name, your logo or a combination of both. However, keep in mind that one of the primary rules in intellectual property is that traders should not be restricted from using commonly used phrases and names in trade. In an application for registering a trade mark, there are certain trade marks that are more difficult to register than others. Some useful questions to consider may be:

(1) If you use your name, do you share a common name with many other people?

(2) Does your trade mark make reference to a geographical location?

(3) Do you intend to use descriptive words on your product(s) that are commonly used by other companies selling the same product?

There may be ways to overcome these issues, depending on your particular circumstances. We can assist you in assessing whether your trade mark is one that will successfully distinguish your goods and services from someone else’s.

What can be trade marked?

A trade mark can consist of letters, numbers, words, a phrase, a picture, a logo or even something more abstract, such as a sound, smell, shape or aspect of packaging. A registered trade mark will last for 10 years after which time it can be renewed.

Before making an application, there are a number of searches that need to be conducted to ensure that you are not encroaching on a similar mark in the same classes of goods and services. You may find there are some changes needed to enable your trade mark to be registered. Therefore, if you are considering lodging a trade mark application, feel free to consult us and we can assist you in tailoring the application as needed.

What are the benefits of a registered trade mark?

As the trade mark owner, you enjoy the following:

 You have exclusive rights to use your trade mark as a brand name (including authorizing other people to use your trade mark) on the specifically registered goods and services.

 A registered trademark is classed as an asset of personal property and can be sold (separately or as part of a sale of business)

 You will be in a position to stop other people from using your trade mark as their brand name on the same or similar goods and services as those in your trade mark registration.

 Trade mark registration usually covers the whole of the Commonwealth of Australia

 You can protect your mark by enlisting the help of Australian Customs Service with a notice objecting to the importation of goods that infringe your registered trade mark

What if I have a registered trade mark and someone else is using a similar mark?

If you have a registered trade mark and:

(a) you discover that someone else is using a substantially identical or deceptively similar trade mark; or

(b) you find out someone has applied to register a trade mark similar to yours and for the same goods and services,

then you have recourse to an objection process.

This process is formatted and has strict compliance deadlines that need to be adhered to. There is a possibility that if you miss a deadline, your opposition will lapse or the pending trade mark application can be registered. We can assist you in issuing Cease and Desist letters on your behalf and/or making opposition submissions to the Registrar.

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