Trade Marks

A trade mark is a ‘sign’ used to distinguish the goods or services provided by one supplier from those provided by any other. It is a unique way of identifying a company’s brand, product or service within the marketplace.

The ‘sign’ may constitute any one or combination of a letter, word, name, signature, numeral, device, heading, label, ticket, aspect of packaging, shape, logo, colour, sound or scent. As can be seen, the category of signs registrable as a trade mark is broad.

A trade mark forms a part of a business’ intellectual property and is, therefore, a valuable commodity worthy of protection. Trade marks can be registered through IP Australia, the government body charged with administration of the Trade Marks Act 1995 and the application and registration process.

Why register a trade mark?

Registration results in the trade mark owner holding exclusive Australia-wide rights to use the mark in association with the class of goods or services in which it is registered.

A registered trade mark constitutes personal property which may be sold, assigned, licenced or transferred by its owner to another. The owner may also seek remedies through the court for infringement of the trademark rights by others.

Registration is essential to acquire these exclusive rights which are not otherwise guaranteed through, for example, the registration of a business, company or domain name. Accordingly, businesses should consider registering the full suite of elements unique to their branding which may include logos, labels, packaging and trading names.

Trade mark registration should be considered at the beginning of a business venture or release of a new product. This may avoid the need to re-brand, should a mark identical or similar to the proposed trade mark already be registered.

Our commercial lawyers, including a qualified trade mark attorney, have experience in intellectual property matters and will work with you to ensure your trade mark and business names are sufficiently protected. We can also assist with trade mark and copyright disputes, and licensing matters.

Registrable trade marks

A trade mark will not be accepted for registration unless it is sufficiently distinctive. Accordingly, generic names, surnames and geographical locations will not usually be registrable unless they have been used for a significant time and are well-known, such as ‘McDonalds’.

Words or signs similar to other traders of like products or services will be unacceptable as will scandalous words, or words or phrases that are likely to be misleading.

Trading and business names, which may otherwise not be considered sufficiently distinctive, may be designed to achieve the uniqueness necessary for registration.

Steps in registering a trade mark

The overall registration process can take between seven to twelve months.

Initially, searches should be conducted to determine whether there are marks already registered that are identical or similar to the proposed trade mark and / or trading name. IP Australia maintains databases which may be searched for this purpose.

We may need to conduct other searches such as business and company name searches through the Australian Securities and Investment Commission for similar trading names that may compromise an application. Simple on-line Google, Yellow Pages and White Pages searches are also helpful in determining whether a trade mark is already being used.

The trade mark application must nominate a class of goods or services for which the mark is intended to be used and associated. There are various classes prescribed by the regulations and more than one may be chosen. Obviously, the more classes selected, the wider the protection that will be given once the trade mark is registered.

Once prepared the application is lodged online with IP Australia which will examine the proposed trade mark to ensure that it complies with the legislation. An urgent examination of the mark may be requested in extenuating circumstance, for example where court proceedings are imminent. The applicant must sign a declaration setting out the reasons why the urgent examination is required.

If any objections are raised by IP Australia during the examination process, these will need to be dealt with – further information may need to be provided or the application slightly amended. Generally, an objection will be based on a proposed mark that is identical or similar to one already registered or that it is not sufficiently distinctive.

Once the mark passes the examination process it is advertised in the Australian Official Journal of Trade Marks and registration of the trade mark may be opposed for up to three months after publication.

If no opposition is received, then the certificate of registration will be issued. The trade mark registration lasts for ten years from the application filing date and can be renewed within twelve months before the registration expires or up to six months thereafter.