A trademark is a way of identifying a particular good, service or business. When one talks about a “brand” this is typically a reference to a trademark. Trademarks can consist of:
- Combination of words, phrases, symbols or designs
- Distinct shapes
- Aspects of packaging
They help to identify and distinguish the goods or services provided by one person from those of another. For example, the "mercedes" emblem.
Registering a business name, company name or domain name is not the same as registering a trademark.
In Australia, trademarks are legislated through the Trade Marks Act 1995 (Cth). In order to properly protect your IP rights in say a brand it is best to register a trademark. You do not have to register a trademark to use it, but registration offers much greater protection.
Unregistered trademarks are protected by the common law (such as the law of passing off). However, common law rights can be more difficult to prove and enforce.
Once registered, the owner has a legally enforceable and exclusive right to that trademark. Such rights also enable the trademark owner to licence its use. For example, a Franchisor may licence its Franchisees to use the Franchisor’s trademark in promotion of the franchised business.
Advantages of Registering a Trademark
In general, the advantages of registration can include:
- the owner gains proprietary rights in the mark;
- preventing the registration by someone else of an identical or deceptively similar mark;
- enabling others to identify your mark in searches so they know in advance that your mark is registered and that you have exclusive rights to the mark;
- adding value to your business, especially where the brand generates goodwill;
- the ability to licence or franchise your rights in the mark in return for a fee;
- placing you in a stronger position to defend against any infringement against your mark.
Requirements for Registration
In order to be registered, the mark must also meet certain requirements as set out in the Trade Marks Act 1995 (Cth). For example:
- it must be distinctive;
- not substantially identical or deceptively similar to another mark;
- it must not contain certain restricted words or images.
Stages for Registration
Trademark registration proceeds along 4 stages:
1. Application/filing stage
Application must be made in the prescribed form. This will involve providing various information including the applicant’s name, address, goods/service description, class type, etc.
2. Examination stage
Applications are examined in order to determine whether the application is as prescribed and whether there are any grounds of rejection. If there is a problem on examination the Registrar may issue an Adverse Report. Usually the applicant is given an opportunity to amend the application for re-examination. The examination stage could last around 3-4 months.
3. Advertisement stage
If an application is accepted, it will be advertised in the Australian Official Journal of Trade Marks.
There is an opposition period of 3 months commencing from the date advertisement whereby others can oppose the application. A ground for opposition could, for example, that the mark is likely to deceive or cause or confusion because of it is similar to another mark already in use.
4. Registration stage
If there are no grounds for opposition the application can then be registered. From the time of application, it can take around 6 to 7 months for the mark to register, depending on issues in the examination stage or opposition.
Once registered, the trademark owner can use the ® symbol beside the trademark protected word or logo.
A trademark is usually registered for 10 years. After which the trademark can be re-registered for further periods of 10 years each.
Trade mark registration in Australia does not automatically provide IP protection overseas. Business owner's looking to promote their business, goods or services overseas will need to register trade marks in those countries by direct application (or for Madrid Protocol members, by application through WIPO).
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The material provided in this document is for general information only and is not to be relied upon as advice. No responsibility is accepted for any loss, damage or injury, financial or otherwise, suffered by any person or organisation acting or relying on this information or anything omitted from it.
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