Trade Mark Protection - Frequently Asked Questions

What is a trade mark?

A trade mark is a sign that is used to distinguish the goods and services of one trader from another. A trade mark can be a letter, number, word, phrase, logo, graphic, sound, smell, shape or any combination of these things.

Why register a trade mark?

Trade mark registration gives you the registered legal right to the ownership of your trade mark in relation to the goods and services for which you have registered it. By registering your trade mark you will prevent others from registering a similar trade mark in the same goods and services areas, thereby securing a powerful monopoly for your trade mark in your industry. Securing trade mark registration will also put you in a better position to stop others from infringing your trade mark, and will subsequently prevent others from taking advantage of the valuable good will and reputation you have established in your industry. Registering your trade mark not only adds value to your business by providing you with trade mark protection, but also serves as a tangible registered asset that can be sold, licensed or assigned to other parties.

What is the difference between a trade mark and a business and company name?

The registration of a business or company name does not give you proprietary rights over that name, only trade mark registration can afford you this type of protection. Even though you may have a business or company name registration, this will not stop other parties from registering your business or company name as a trade mark and subsequently gaining the registered right to use that name in trade. Should this occur, the owner of the registered trade mark could then take action against your use of your business name if it is used on similar goods and services as those covered by their trade mark registration.

What constitutes a registerable trade mark?

You cannot register trade marks that other traders should freely be able to use in the normal course of trade, such as descriptive terms or common trade expressions that refer to your goods or services, i.e. the word "plumber" for plumbing services or the term "lollies" for confectionary goods. Similarly, common surnames, geographic locations, common colloquialisms and references to quality aren't capable of being registered. Combinations of all of these things are also difficult to register, such as SYDNEY QUALITY MECHANIC SERVICES for mechanic services, as all mechanics in Sydney should be able to say that they provide quality services. Therefore, invented or suggestive words that do not describe your goods or services make for the best trade marks.

How do I find out if my trade mark can be registered or if it has already been registered by someone else?

IP Wealth offers professional trade mark search services that can ascertain whether your trade mark constitutes a registerable trade mark and if it is available for registration. It is particularly important to establish whether your trade mark has already been registered by another party, as the use or intended use of your trade mark could constitute infringement of someone else's registered trade mark asset. Where possible, we highly recommend searching the registerability and availability of your trade mark before you commence use of it in relation to your products or services.

How does the trade mark process work?

Trade marks can be registered in any number of the 45 different goods and services areas as set out by the Nice classification system. For example goods such as cleaning products, clothing and musical instruments and services such as advertising, entertainment and software design all fall in to different goods and services areas. Once we have worked with you to establish your core goods and services areas, we will prepare your application with the aim of securing the broadest possible protection in your relevant goods and services classes. We will then file your trade mark application with the Trade Marks Office upon your approval. Once filed, your trade mark will be examined by the Trade Marks Office, and they will either accept your trade mark application or issue it with an Examiner's Report. Once acceptance for your trade mark is achieved (either immediately or after we have responded to your Examiner's Report), your trade mark will then enter the mandatory three month opposition period. If there are no oppositions to your trade mark (oppositions are not common), your trade mark will move to registered status, which will span for ten years from the original date of your application

How long does the trade mark process take?

The trade mark application process takes a minimum of seven and a half months from the date of application to the date of registration. The first hurdle in the trade mark application process is the examination of your trade mark by the Trade Marks Office, which generally occurs three to four months from the date of application. Shortly after that, your trade mark will enter the mandatory three month opposition period, which commences four and a half months from the original date of your trade mark application. When the mandatory three month opposition period expires, your trade mark will then move to registered status. Your trade mark registration will span for ten years from the original date of your application.

Is there any way that I can speed up this process?

The Trade Marks Office provides grounds for fast tracking the examination of your trade mark from the usual 3 - 4 months to within 2 - 4 weeks of your filing date if you are able to establish that you have a legitimate commercial reason for requiring the expedition of your application. The viable reasons for expediting an application include a significant investment in advertising, plans to file the trade mark overseas, fear of infringement, pending court actions or any other commercial considerations. Although this doesn't speed up the process as a whole, it does mean that you will find out if the Trade Marks Office has accepted your trade mark sooner rather than later.

Can I register my trade mark overseas?

Your trade mark can be registered all over the world, with most of the same rules applying overseas as they do in Australia. However there isn't such a thing as a "worldwide" trade mark application and a separate trade mark application needs to be filed in each country, with the only exception to this being the European Community.