Trademark Registration & Search

A business name is the name used to identify your business to your customers and other businesses.

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A business name is only required if the legal entity that owns a business wants to identify the business with a different name. The purpose of registration is to identify the legal entity that owns the business. It does not grant exclusive rights or ownership over your business name.

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Registering a business name also does not stop others from using the same or a similar business name without registration.

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Rather than identifying your business, a Trade Mark identifies the unique goods and services you offer in the marketplace and distinguishes it from the goods or services offered by other traders.

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A Trade Mark can be registered for words, letters, names, numbers and phrases as well as images, shapes, colours, logos, sounds, movements or a combination of these.

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Because the purpose of the Trade Mark is to distinguish your goods and services from those of other traders, a trademark must be distinctive. So while your business name can be a simple description of your business, it would not necessarily be registrable as a Trade Mark.

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Unlike business names, there is no legal obligation to register a Trade Mark. Registration provides exclusive rights to use, license, and sell the Trade Mark in the Classes of goods and services in which the Trade Mark is registered.

• A business name serves to identify the legal entity that owns a business; it does not grant exclusive rights or ownership
• The purpose of a Trade Mark is to distinguish your goods and services from those of other traders; it grants exclusive rights and ownership

To be eligible to apply for a Trade Mark, you must be one of the following:

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• an individual

• a company

• an association

• a trust (in the name of the trustee)

• a corporation (in the name of the corporation itself).

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To apply for a Trade Mark, you will need:

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1. The Trade Mark (your brand name, slogan, or logo)

2. The applicant's name and address

3. The goods/ services relevant for your Trade Mark

• Before applying for a Trade Mark, check that you are, or represent, an eligible entity.
• Prepare the relevant documentation (the brand name/ logo, owner's details, and the relevant goods/ services).

The process to register a Trade Mark consists of 5 stages:

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1. Filing stage (= your application has been filed)

2. Examination stage (= your application is being examined)

3. Acceptance stage (= your application has been accepted)

4. Publication stage (= your application is published for oppositions)

5. Registration stage (= your trade mark is registered)

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The registration process takes between 7-8 months (e.g. Australia, USA, EU) and 12-14 months (e.g. China, Canada, India) depending on the jurisdiction.

• The process to register a Trade Mark consists of 5 stages and takes between 6-14 months, depending on the jurisdiction.

The costs to register a Trade Mark can vary significantly, depending on:

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• How many names, slogans and logos you use and wish to register

• How many Classes you need to cover all of your goods/ services

• In how many countries you wish to protect your Trade Mark

• Whether your application receives any objections or oppsoitions

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The costs payable comprise of professional fees and official fees. The official fees vary from country to country.

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As a rule of thumb, registering a Trade Mark in one Class will cost about A$ 1,000 per country in a smooth case. Contact our team for a free consultation and quotation for your Trade Mark.

• The costs to register a Trade Mark can vary significantly, depending on the number of marks, classes, and countries.
• Our team will provide you with a free consultation and quotation for your Trade Mark.

A Trade Mark lasts ten (10) years. Most jurisdictions count from the filing date, others from the date of successful registration.

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You can renew your Trade Mark each ten (10) years indefinitely. Keep in mind that Trade Marks can become vulnerable to cancellation for non-use if you do not start using, or cease using your Trade Mark in connection with the registered goods/ services.

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In some jurisdictions, you will need to actively prove use of your Trade Mark to the  Trade Marks Office (e.g. in the United States and the Philippines). In other jurisdictions, third parties can apply for your Trade Mark to be removed from the register for non-use (e.g. Australia and United Kingdom)

• Trade Marks last for ten (10) years and can be renewed indefinitely.
• Trade Marks must be used in the marketplace to avoid cancellation for non-use.

Trade Marks are generally a matter of national law. This means, registering a Trade Mark in Australia only provides protection within Australia, leaving your Trade Mark unprotected overseas.

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You can protect your Trade Mark internationally in two ways:

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• Filing an application directly to each country where you want to protect your Trade Mark; or

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• Filing an International Registration (IR) through the World Intellectual Property Organisation (WIPO) under the Madrid-Protocol, and nominating the signatory countries where you want to protect your Trade Mark.

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With national applications, you can tailor each application according to the requirements of the relevant jurisdiction. This will reduce the risk of processing delays or any formality issues that might hinder registration. You can also file your Trade Mark in one country at a time and so spread the costs of international protection over a longer period of time.

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To apply for an International Registration, you must have already filed an application for, or own registration of, the Trade Mark in your home country.

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You must file your International Registration through your national Trade Marks Office which will check if your application meets the formal requirements of the Madrid Protocol. If satisfied, the office will certify your application, issue a notice of certification and forward your application to WIPO.

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WIPO will then issue an International Registration number and notify the Trade Marks Offices of each designated country of your International Registration. The Trade Marks Offices will then process your application in accordance with the national laws and regulations.

• A Trade Mark is a national right and does not offer protection overseas.
• You can file a Trade Mark overseas via the Madrid-Protocol or via national applications.
• Each county/ jurisdiction will examine your Trade Mark in accordance with their own national laws and regulations.

As the owner of a Trade Mark, it is your sole responsibility to enforce your rights. The Trade Marks Office only administers Trade Marks; it does not monitor the marketplace or act against unauthorised use of your Trade Mark.

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Before making any claims against a third party, you should generally consider:

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• Do you legally own a Trade Mark in the relevant jurisdiction?

• Does the third party use the same or a deceptively similar mark?

• Are the respective goods/ services the same or closely related?

• Has there been any confusion in the marketplace, or is confusion likely to occur?

• Do you have evidence of the infringing conduct?

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If you take the view that a third party infringes upon your Trade Mark, you may wish to contact them to express your concerns. Alternatively, you should seek professional advice.

• Before taking any action, check that your Trade Mark is registered in the relevant jurisdiction.
• Keep all records and evidence for future reference.
• Seek professional advice to establish the best enforcement strategy.