How does trade mark registration protect your business?

Trade mark registration

Trade mark registration

A registered trade mark will protect the unique brand name of your product and/or services. It will help customers distinguish you from your competitors. It can add value to your business. You can prevent others from using it. Think Nike, Amazon, Levi's, Rolex, Band-Aid, Vaseline - they are all legally trade marked names. You and I are informed by their trademark about the nature and quality of their goods. That goodwill, an intangible asset, adds value to their business.

What is a trade mark?

A trade mark protects a word, logo, phrase, letter, sound, smell, picture, movement, aspect of packaging or any combination of these.

What are the benefits of registering a trade mark?

A registered trade mark is an asset. It can be bought, sold, assigned and licensed to others.

A registered trade mark gives you an exclusive right to use the trade mark for your goods and services. You can legally prevent others from using your brand for the same goods and services. You can obtain relief for infringement.

A registered trade mark will deter your competitors from using or trying to register the same or similar trade mark.

A registered trade mark can prevent the importation of goods bearing infringing marks. You can ask the Australian Customs Service to seize the offending goods.

Trade mark registration in Australia

A trade mark registered in Australia will only give you protection in Australia. If you are operating in another country, then you will need to apply for trade mark protection in that country.

Searches for registered and unregistered trade marks

If you don’t want to expose yourself to liability for trade mark infringement, you should conduct a detailed search of IP Australia’s register to determine any registered trade marks that are the same or similar to your trade mark.

If you are aware of any competitors with a similar trade mark to your intended trade mark you may have to consider changing your trade mark.

Even if the competitor’s trade mark is not registered, if your trade mark amounts to passing off or misleading and deceptive conduct, you may expose yourself to liability under the Australian Consumer Law.

For this reason, you should also search the:

  • Internet using Google;
  • directories and data bases relating to your particular industry;
  • ASIC to search the register of business and company names.

Application to register a trade mark

You must apply to IP Australia to register a trade mark. For a paper application the fees are $350 per class. For an online application, the fees are $250 per class for a standard online application or $330 per class for a pre application service called TM HeadStart. An examiner will give you feedback before you file your application.

What goods and/or services are you using your trade mark for?

For adequate protection, you must understand the trade mark classes and how to select the right class of goods and services for your business.

There are currently 45 classes to choose from. Classes 1 to 34 are for goods. Classes 35 to 45 are for services.

Ask yourself, what is your core business? Do you need to protect the goods you sell as well as the services you offer? Are they your goods to protect, or are they another business’s responsibility?

The IP Australia pick list helps you choose the appropriate classes of goods and services for your trade mark reducing the chances of making a mistake.

If I had a unique brand name for my business, I would need to consider the following classes:

  • Legal services - class 45
  • Legal education services – class 41.
  • Copywriting services (writing copy and SEO) – class 35.
  • Computer programming services for SEO – class 42.

If I choose only legal services and not legal education services, but my business offers legal education services, then I would not be adequately protected.

In addition to legal services, I would need to add class 35 for my copywriting services. I do not offer computer programming services for SEO, but if I incorrectly added class 42, then I am paying for a class of services I do not offer.

Amending your application to register a trade mark

You can remove a class or delete some of the goods and/or services, but you cannot increase the scope after registration because adding another class may affect the basis on which your right was approved and may affect other traders’ rights.

Amending an application to include a new class will cost you $450.

Time frame for examining standard application

From the time of filing your application to registration of your trade mark (assuming it is not opposed) will take around 7-8 months.

Once IP Australia has examined your application and assuming your trade mark meets the relevant requirements, it will be advertised in the Australian Official Journal of Trade Marks.

Third parties have an opportunity to oppose your trade mark registration. If it is not opposed, IP Australia will officially register your trade mark.

Life of a trademark

The life of a trade mark is 10 years from its filing date and for every renewal of your trade mark.

Key take-aways

  1. Do you have a unique brand name for your goods and/or services?
  2. Do people identify with your brand name? Are they informed by your brand name about the nature and quality of your goods and services? If the answer is yes, then consider registering a trade mark.
  3. Make sure you choose the right classes of goods and/or services for your trade mark.
  4. Use the IP Australia pick list to find the appropriate classes and reduce fees.
  5. Consider whether you need trade mark protection in another country.

If you would like assistance with a trade mark application, call me on 0438 826 054 for a free 30 minute discovery call or send an email to trudi@trudicase.com.au.

DISCLAIMER – this article is general information only. It is not legal advice. You should seek independent legal advice for your particular circumstances.