What is a Trademark?
The trademark laws operating in Australia define a trademark as:
A trademark is a sign, often referred to as a logo or a brand. It’s used to distinguish the goods and services of one company from those of another. A trademark is anything that distinctly identifies your company and can be a word, a logo or a combination of both. It can even be a device, label, name, signature, letter, numeral, shape of goods, packaging, colour or combination of colours, smell, sound movement, or any combination of these.
Registering your trademark gives you the exclusive right to use that mark for 10 years, renewable every 10 years thereafter. Once your trademark is registered, you can use the symbol ® next to your trademark. Whilst you’re in the process of registering a trademark (which can take around 8-9 months), you can use the ™ symbol.
What trademarking isn’t
It’s a common misconception that trademarking a name, company name or domain name protects this name from being used by another company within the same industry. However, if a name is not currently registered within an industry class, it’s open to anyone.
Trademark offices look to see if the application is unique enough to permit a trademark. That’s all. They don’t look into the trading history of a company when they examine an application.
Only a trademark gives you legal protection. The use of a business name, product name, service name or domain name does not necessarily qualify as a trademark, which means you could be asked to change your name if it infringes someone else’s trademark rights
Who can own a trademark?
Anyone who owns a business, intends to start up a business or is currently developing new products or services to market within three years from the date of the registered trademark.
A trademark can be challenged by other parties if they believe that you are not the rightful owner of the trademark or that the application has been made in bad faith.
Step 1 – Trademark Search
We consider that a trademark search should be your first item on your To Do list when considering a new name for a business, company, product or service. If your preferred name is too similar to other Australian trademarks, you could not only have difficulties in securing rights, but you may be infringing another person’s rights and therefore face legal action.
Ensuring your chosen trademark is available and not infringing anyone else’s rights provides you with peace of mind. You will know that your brand won’t be stepping on any toes, and that it can become your property and business asset.
Even if you have been using your brand and promoting it for some time, difficulties can arise, so a trademark search should always be considered.
Once you file an application with the relevant government office, it usually takes around four months.You may wish to know where you stand sooner and our various searches can provide you with this information.
Step 2 – Filing the Application and Classes
As trademarks act as signs to distinguish the goods and services of different traders, it follows that when you file an application you must advise the nature of those goods and services.
All goods and services fall into Classes that have been listed and put in place under an international agreement. The list of classes and the goods and services that fall into them have been adopted by a majority of countries around the world. There are 45 of these Classes to select from. Numbers 1-34 cover goods and numbers 35-45 cover services. As a part of our search process, regardless of the type of search you select, we provide our clients with their options for protection.
When we prepare and file applications for Australian trademarks in order to meet the basic filing requirements, we must advise the trademark office of the class number and provide a specification of the goods and services being claimed with the classes. By employing our office to file the application on your behalf, we manage this for you.
Further, by employing our office to file the application, we will be listed as your agent on the official record as the Address for Service.This means all government correspondence will come to our office for attention. It also means that in the event that another party wishes to query, contact or challenge your trademark they can contact us rather than you. By receiving all communication for you we can review, report and advise accordingly.
Step 3 – Government Examination (Compliance Report or Approval)
When an application is submitted, the government Examiner will check that it complies with all the legal requirements and if the trademark is able to be registered
This process currently takes around four months, a time frame that does fluctuate. Once examination is complete, we will receive either a Compliance Report if there are any problems found, or a Notice of Acceptance if no problems are found.
Compliance Report (adverse)
If an application receives an adverse report from the Examiner, the client can decide not to proceed with the application, which means that the application fee is forfeited and the application stops. However, if the client wishes to respond to the examiner’s adverse report, fees per hour will be quoted to assist the client to write up and file arguments. These are designed to persuade the Examiner to overcome the issues identified. There are two main issues that could arise from the Examiner’s report:
i) lack of distinctiveness (descriptive words such as Ice Cream Parlour for an outlet selling icecream)
ii) laudatory words (Great, Best and Amazing)
ii) trademark application is too similar to an earlier registered trademark (causing confusion in the market place)
iii) geographical names (Bondi, Manly, London, Sydney, New York)
iv) popular surnames (Smith, Jones, King and so forth)
v) deceptive names (Koka Kola for a soft drink, deceptive for Coca Cola)
vi) famous trademarks (Coca Cola, Chanel, Nike)
Notice of Acceptance (approval)
If no issues are found during the government examination of your application, or if you successfully address any issues that are raised, a notice of acceptance will be issued. This is a letter telling you when the application will be advertised in the Official Journal of Trademarks.
The advertisement of acceptance commences a period of time during which other people may lodge formal objections to your trademark becoming registered, if they believe they have grounds to do so. They will have two months from the date of advertisement to file a notice of intention to oppose. Once a notice of intention to oppose has been filed, the opponent must then lodge their statement that sets out the grounds, and particulars upon which they oppose.
If nobody lodges a notice of their intention to oppose, or requests an extension of time in which to lodge their objection, your trademark can then progress to full registration.
Opposition (by third party during public advertising period)
If a third party does oppose the application, the client will be advised and depending on the circumstances, a separate quote for extra work will be quoted at that time. No application or objections are the same, therefore extra consultation fees cannot be pre-determined. The client can either decide to fight the opposition raised by a third party or decide not to proceed with the application at this stage.
Step 4 – Registration & Rights
Once the application has passed the trademark advertising period without any objections, the trademark can then proceed to registration upon receipt of final fees. The whole trademark process can take up to eight months, with the earliest registration date being around the seven months mark.