Trade Marks

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.

A crucial component of effective brand protection is preventing competitors from taking advantage of your goodwill and reputation by using Trade Mark that are too similar to yours. This can be done by filing an opposition, which is a formal objection to the registration of another party’s trademark.

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Note that you can only oppose a Trade Mark once it has been accepted for registration and published for opposition, meaning you cannot oppose a Trade Mark if only an application for registration has been filed.

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The evidence you are required to submit to support your opposition will largely depend on your grounds of opposition. For example, if you oppose a Trade Mark on the basis that you are the true owner of the mark and used it before the applicant filed to register the Trade Mark, the following evidence is likely to be relevant:

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• evidence of you using the Trade Mark prior to the applicant seeking to register the mark;

• evidence that you have used the Trade Mark for a continuous period;

• evidence of how you initially came up with the Trade Mark.

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The costs involved in the opposition process can vary significantly, and are depended on the specific circumstances of the opposition. Generally speaking, the more complex the case and the more evidence needs to be prepared, the higher the costs will be.

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Read more about the opposition process in Australia here.

• Only accepted and published Trade Marks can be opposed.
• You will need evidence supporting your grounds of opposition.

If you are a brand owner selling on Amazon, signing up to the Amazon Brand Registry is essential to protecting your Trade Mark.

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The Amazon Brand Registry allows enrolled brand owners to access powerful tools to protect their brands and reduce infringements.

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Some of the benefits are:

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• Gives you control over pages that use your brand to ensure your brand is represented accurately

• Provides easy search and report tools to find any potential infringement of your brand

• Automated protections remove suspected infringing content

• Dedicated Amazon team for submitting and escalating Trade Mark violations

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You must have a Trade Mark for your brand to register. You will also need to provide a list of product categories your brand covers, and a list of countries where your products are manufactured and distributed.

• If you are selling on Amazon, consider protecting your Trade Mark in all relevant countries.
• A Trade Mark will allow you to enrol in the Amazon Brand Registry.