24 November 2020
If you run a business, you have likely spent a lot of time and money on marketing to publish your unique product or service. Registering a trade mark serves to protect your brand and will set you apart from your competitors. This article provides a brief overview trade mark registration in Australia.
A trade mark is sometimes referred to as a ‘brand’ and can be a word, phrase, logo, picture, shape, movement, aspect of packaging, sound or even a scent. A trade mark is something that indicates to the public who you are and for that reason, it is a valuable marketing tool.
Although you can use a trade mark without registration, you will not have any intellectual property protection until registration. Registering your trade mark will give you the exclusive right to use and license the mark. If you are the registered owner of a particular trade mark, you will be in a better position to take legal action in the event that another person begins using it. Further, if your business is successful then the value of your trade mark will increase and you will have the right to sell the mark if you ultimately choose to do so.
A common misconception among business owners is that a registered business name, company name or domain name will give you similar protections to a registered trade mark. That is incorrect. Whilst there are some restrictions on the use of names which ASIC will enforce, only a trade mark will prevent other businesses from using the same name.
When lodging a trade mark application, you must indicate the types of goods and services that you intend to use the trade mark for. There are 45 trade mark classes to choose from and over 60,000 subclass goods and services listed therein. It is important to select the right goods and services the first time, as you will be unable to expand the list once the application is lodged.
In determining what goods or services you use the trade mark for, you should consider the nature of your business, what your clients know you for, what you provide to your clients and from what are you deriving your business income.
Once the application is lodged, IP Australia will assess the application and you can generally expect to receive a response after at least 3 months. If the assessor raises an issue with the trade mark, you will receive an adverse examination report and will be given 15 months to respond. If your trade mark is accepted, the trade mark will be advertised online as accepted and opposers will have 2 months within which they may challenge the registration. If your trade mark is not challenged within that 2-month period, your trade mark will be registered.
Sometimes in considering a trade mark application, IP Australia will issue an adverse examination report. An adverse examination report does not mean that your trade mark cannot be registered, rather the report will outline why your trade mark does not meet legislative requirements and will provide a list of options you may take to overcome the issues raised. The purpose of the report is to advise you of the non-compliance issues IP Australia has found and to afford you with the opportunity to respond to those issues by way of submissions, a declaration or a proposal. The details of the examiner who issued the report will be provided so that they may be contacted to discuss the report and to seek further clarification if necessary.
Although you have 15 months to respond to the report, you should be mindful that this time frame is to include the examiner’s response and therefore you should not leave it to the last minute.
Examples of the types of issues that may be raised include:
To respond to the abovementioned issues, you may need to provide evidence of use of the trade mark. The type of evidence you should put forward will largely depend on the issue raised.
JHK Legal has experience in dealing with commercial and intellectual property matters. Please do not hesitate to contact our commercial team to discuss any new matter.
Written by Claudia Smith, Lawyer