Lots of businesses in Australia and around the world struggle to conceptualise the value of registering and protecting their brand by registering a trade mark.
A trade mark is used to distinguish the goods and services of one trader from those of another. The owner has exclusive rights to use, sell or license the trade mark. A trade mark can be letters, names, symbols, figures, numbers, words (plain or in fancy font), colours, phrases and slogans, sound, smell, logo, shape, picture, or any combination of these. Registration of a trade mark is recommended, and once granted the registration can last indefinitely provided renewal fees are paid every 10 years and the mark is still being used.
There are three main ways to apply for a trademark:
- engaging a skilled lawyer or trade marks attorney to draft and lodge your application, or
- lodging your own application via the IP Australia website, or
- utilising IP Australia’s Trade Mark Headstart service and lodging under their practical guidance (though this does not include legal advice).
Broadly, the trade mark application process includes the following steps:
- confirming your eligibility to register and whether you own the trade mark
- considering the type of trade mark that you have and wish to lodge for registration and protection
- confirming how you use or intend to use the trade mark in relation to the 45 different classes of goods and services
- choose which goods and/or services you want protected by your registration
- searching and confirming any similar, identical or conflicting trade marks that already have been applied for or registered (we recommend you engage the services of a lawyer or trade marks attorney to perform these searches)
- taking advice on any possible grounds for rejection under the Trade Marks Act 1995 (for example, descriptive terms will likely be rejected)
- drafting specifications for your trade mark in the goods and/or services chosen for registration, and
- submitting your application and paying the filing application fee charged by IP Australia.
A typical trade mark application generally needs to include:
- your name/ownership details and contact details
- an Australian or New Zealand address for service, which may be the address of the solicitor or attorney acting on your behalf
- a representation of the trademark
- a description of the classes to which it will apply
- a list of the relevant goods/services in the nominated classes
- a translation if the trademark is in another language, and
- the payment of the IP Australian filing application fee.
Once you’ve lodged your trade mark application, your trade mark and application details will be made publicly available online through IP Australia’s trade mark register.
IP Australia then reviews and examines the trade mark and your application. Be prepared for a bit of a wait. Trade mark applications typically take up to three months to be examined and assessed. If you cannot wait that long, for instance due to an imminent product launch, then your trade mark application may qualify for expedited examination. This is granted by IP Australia on a case-by-case basis and lessens the overall examination process wait time.
If your trade mark has been accepted by IP Australia, then you will be notified in writing and you must wait at least a further two months while your trade mark is open to the public for opposition, where a third party can challenge your application.
IP Australia can issue what is known as an ‘adverse examination report’. If this occurs, IP Australia have picked up an issue with your trade mark – usually there is a conflict with a similar or identical trade mark that has already been registered, or some other ground for rejection applies. Generally, you will then have 15 months to resolve any issues.
Overall, you can expect at least 7.5 months for your trade mark to be registered. Generally, the date you file your trade mark application becomes your ‘priority date’. Regardless of how long your trade mark takes to be registered, upon registration your protection will be back-dated to your priority date.
Trade mark applications can be meticulous to draft. The team at Bolter are equipped with the skills to draft specifications for your trade marks and pave the way for the registration of your trade mark. If you need us to check whether your trade mark can be registered or to prepare an application for you, then give us a call.