Lots of businesses in Australia and around the world struggle to conceptualise the value of registering and protecting their brand through 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. It offers protection over a business’ identity, reputation and brand. 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 will last around 10 years. A trade mark is renewable after this period if renewal fees are paid and the mark is still being used.
There are three main ways to apply for a trademark:
- engaging a skilled lawyer or IP specialist 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 guidance.
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 trade mark
- searching and confirming any similar, identical or conflicting trade marks that already have been applied for or registered
- 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.
Any trade mark application will need to include:
- your name/ownership details and contact details
- An Australian or New Zealand address, which is usually the address of the solicitor acting on your behalf
- a representation of the trademark – see our image requirements for online services
- a description of the classes to which it will apply
- a list of the relevant 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 actual trade mark will be made publicly available online through IP Australia’s trade mark register.
IP Australia reviews and examines the trade mark and your application. IP Australia can issue what is known as a ‘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.
If you wanted to find out more about the 45 goods and/or service, then you should visit IP Australia’s website. They have a full list and examples of specifications that would likely fall within the scope of those goods and/or services.
Be prepared for a bit of a wait. Trade mark applications typically take up to six months to be examined and assessed. If your trade mark has been accepted by IP Australia, then you will be notified in writing and you must wait a further two months while your trade mark is open to the public for opposition, where a third party can challenge your application if it is too similar to their own trade mark. If this happens, you will be required to defend your application in court which may be costly.
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.
Overall, you can expect a good 12 months for your trade mark to be registered. 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 you give us a call.