What is a Trademark?

A Trademark is a sign used to distinguish a trader’s

goods or services from the goods or services of other traders. The sign may be a word or words, a symbol or device, a label, a colour or colours, a shape, a sound, a smell, or any two of these elements used in combination. For example, the Coke word in fancy script and the shape of the glass bottle.

 

Why are Trademarks important?

Trademarks and their associated goodwill may be the largest asset of a business, especially for those providing services. A good trademark increases in value with time and can quantify the value of a business.

 

What is the difference between Trademark protection and copyright protection?

Trademark registration provides the owner with legal rights to the exclusive use, and  the control of the use of the trademark throughout Australia for the goods or services for which it is registered. A trademark has value as an asset so long as it used by the owner for the goods or services registered.

 

Copyright automatically gives you rights to the protection of your original works of art, literature, music, films, broadcasts and computer programs against copying and certain other uses. It protects the original expression of ideas, not the ideas themselves.

 

While the act of making copies of copyright material can infringe exclusive rights, a certain amount of copying is allowed under the fair dealing provisions of the legislation. Copyright doesn’t protect you against independent creation of a similar work. Legal actions against infringement are complicated by the fact that a number of different copyrights may exist in some works. (Source: IP Australia)

 

What are the advantages of registering a Trademark?

 

Your trademark registration is primary proof of your ownership of the trademark. This enables you to enforce rights against a third party if they adopt your trademark or apply it to their goods or services.

 

Can a Trademark also be a trading name or business name?

Yes and vice versa. But only a registered trade mark can prevent unauthorised use by others.

 

Can a URL be Trademarked?

You can register your domain name as a trademark as long as it meets the requirements of the TradeMarks Act 1995.

 

Who owns a Trademark in Australia?

The first person to use the trademark. Or, if there is no use the first person to apply for registration is the owner and entitled to seek registration.

 

Can two or more persons have the same Trademark?

Yes. Provided their respective uses are not likely to cause deception or confusion to consumers. For example ‘Pulsar’ is used by different owners on motor vehicles (Nissan) and watches (Seiko).

 

Can a Trademark owned by one trader prevent use and registration of a non-identical trade mark by another trader?

Yes. If the two trademarks would cause deception or confusion to consumers. For example trademarks which are not identical, but sound alike (Canon/Kannon) used on the same or similar goods ( cameras/camera lenses).

How long can a Trademark be registered?

The initial term of registration is 10 years from the filing date. The registration can be renewed indefinitely for further periods of 10 years each.

Does an Australian Trademark registration only apply in Australia?

Yes (Australia includes Norfolk Island but not New Zealand). However, an Australian application or registration may provide a basis for foreign trade mark protection.

 

What happens if a registered Trademark is not used?

If the registration is at least five years old and is not used for a continuous three-year period, it can be removed from the Register by others for non-use.

Can I just start using ™?

You can only use the symbol ™ a legitimate application for a trademark has been filed within the country you intend to apply for a trademark.

 

Can I just start using ®?

It is an offence of the TradeMarks Act 1995 to use the ® symbol for a trademark that is not registered in Australia. Other countries have similar laws protecting the use of the ® symbol.

Thinking of re-branding?

If your business is ready to re-brand, remember these six key points regarding the protection of your trademark:

Flexible fonts – Register the word/s of your trademark in block capitals. This way you can change the font, without having to re-register the trademark.

Who owns it? – Trust, business or trading names cannot be listed as ‘owners’ of a trademark. Corporation, individual, or trustee/s names are all acceptable.

Location, location – Think carefully about using your personal, business or company’s registered office address on your application, as it’s published online. PO Boxes are permitted, but a street address is preferable.

Choosing categories – Let’s say you’re a winery and predominantly, you make wines. But what about the sale of that wine, your restaurant, or the branded products you sell? Always consider all the goods and services you provide, before choosing categories.Sometimes you do more than you think.

Using your Trademark – Once registered, if your trademark is not used for a continuous period of three years, it may be removed on the grounds of non-use.

Keep it current – Trademarks are registered for a period of 10 years at a time, but can be renewed indefinitely, provided renewal fees are paid and you continue to use the mark.

How long is the trade mark registration process in Australia and New Zealand?

In Australia and New Zealand, it takes 6-9 months assuming there are no major objections or oppositions to the applications.

Can I trademark internationally?

There is no such trademark that provides protection internationally. To obtain trademarks outside of Australia and New Zealand, they must be obtained within the country they wish to protect the brand.

How long does it take to trademark overseas?

The period from application to registration varies from country to country and whether issues arise from the application.

Canada: 12- 18 months

China: 12-24 months

Germany: 12- 18 months

India: 18 – 26 months

Malaysia: 24 – 36 months

USA : 12 – 18 months

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we are not a legal firm, we do not provide any form of legal advice, however we are able to assist you in obtaining legal advice from our trusted third party legal providers if required