FOR IP PROFESSIONALS

Trade mark FAQs

Amending a trade mark

Can I amend my international registration at any stage?

Once the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in Geneva has registered your trade mark, you cannot extend the goods and/or services claimed, and you cannot make any changes at all to the trade mark. You can, however, change your name and address details at any stage, and request a limitation of the goods and/or services to narrow the claim.

Can I amend my trade mark if I've used TM Headstart (pre-application service)?

TM Headstart (pre-application service) allows for you to amend your trade mark if necessary. Because TM Headstart (pre-application service) assessments happen before you officially file your application for registration, there is a small window of opportunity for you to make amendments. Depending on the nature of your amendment, you may have to pay an additional fee if it means there is additional searching or assessment necessary.

Can I amend the ACN on my application?

No. A change in the ACN means a change in legal ownership and will therefore constitute an assignment.

I have already filed my application but I want to make changes to the trade mark. Can I do this now?

This answer depends on whether details of the application have been published, i.e. entered in trade marks database. Prior to publication: Substantial amendments can be made, but only if the Trade Marks Office is contacted in time. Currently details are published within approximately 1-2 days of filing. However, there are some times when details are published on the same day as filing, depending on circumstances and volume of filings. Post Publication: If the details of your application are already published, you cannot make any changes which will affect the identity of your trade mark as originally filed. Only very minor changes can be made.

My application is in the name of ABC Pty Ltd. Can I amend the name to 123 Pty Ltd?

If the ACN numbers are different, this will be an assignment and an amendment cannot be made. You may apply for an assignment by filing the form and proof of title.

What steps are involved in amending my trade mark?

You can make a written request to amend your trade mark, which must include details of the trade mark number, the nature of the amendment and the proposed new trade mark. Any request for an amendment to a trade mark is examined by a trade mark examiner.

Why can't I amend my trade mark after filing?

Details of new applications are published within approximately 1-2 days. It is not possible to amend your trade mark after publication as it would disadvantage those applicants who are filing after and who may be unaware of any changes at the time they do a search for their trade mark.

Applying for TM Headstart (pre-application service)

After I am phoned with the results of the assessment when do I need to pay the Part 2 fee?

The Part 2 fee needs to be paid by 11.59pm AEST/AEDT on the day stated on your Results Report. After this time your TM Headstart(pre-application service) request will discontinue and cannot be revived.

Can I amend my trade mark or my goods and services once I have paid the Part 2 fee and converted my request into a trade mark application?

Payment of the Part 2 fee converts your TM Headstart (pre-application service) request to a trade mark application and the details of your TM Headstart (pre-application service) request are then published on the Trade Mark Register (usually on the same day). Once the details of a trade mark application have been published you can't make any changes that will substantially affect the identity of your trade mark or broaden the scope of your goods or services. It's important to ensure all your details are correct before paying the Part 2 fee.

Can I amend the goods and services once I have submitted the TM Headstart (pre-application service) request?

Yes, amendments can be made once the TM Headstart (pre-application service) request has been submitted, but there may be additional fees. You can choose to delete goods or services from your TM Headstart request at any time, but fees won't be refunded once the TM Headstart (pre-application service) request has been submitted. As this is a fast turnaround service it is unlikely that we will be able to make extensive changes to your goods and services. It is important therefore that you carefully select all the goods and/or services of interest to you at the time of submitting your request.

Can I amend the trade mark?

Yes, but if the amendment requires us to undertake another assessment then an amendment fee per class of goods or services will be payable.

Can registration of my trade mark be opposed by anyone?

Once you have paid the Part 2 fee your TM Headstart (pre-application service) request is converted to a trade mark application. Any trade mark application that is accepted for registration can be opposed by another party.

Do I get a refund of my Part 2 fee if my application is not successful?

No. The Part 2 fee is to convert your TM Headstart (pre-application service) request to a trade mark application. This fee is non-refundable.

Do I have to use the Goods and Services pick-list?

Yes. You can only make a TM Headstart (pre-application service) request using the goods and services pick-list. The pick-list must also be used for any amendments to the goods and/or services in a TM Headstart (pre-application service) request. For more information see the Classes of goods and services FAQ

Does TM Headstart (pre-application service) deal with all types of trade marks?

No. TM Headstart (pre-application service) does not cater for: - special kinds of signs / non-traditional trade marks (ie. colour, shape, scent, sound) - defensive, certification or collective trade marks - series trade marks - divisional applications If your trade mark falls into one of these categories you'll need to file an application through the standard trade mark application system.

How is my TM Headstart (pre-application service) request affected by trade mark applications from overseas?

We have agreements with other countries that allow overseas trade mark applicants to claim the date they filed in their country as their filing date in Australia. This date may be earlier than the date you completed the filing process. To meet our international obligations, and to make sure of your rights, we will not register your trade mark until it is certain that there are no similar overseas applications filed in Australia later than your application that are claiming an earlier convention priority date.

How long is the result of the assessment valid for?

The result of the assessment of your TM Headstart (pre-application service) request is only valid on the day you receive it. This is because the Trade Mark Register is constantly being updated with new trade marks and old or unwanted trade marks being removed. There are also changes in office practice or legislation from time to time that could affect the outcome.

If I decide to pay the Part 2 fee do I need to request expedited examination?

No. Within two weeks of paying your Part 2 fee your application will be examined. It will be either accepted for registration or you'll be sent a report detailing any problems your application is facing.

If I don't get a positive result can I provide submissions or request amendments to overcome the issues raised?

We will discuss options that may be available to you to overcome the problems raised in their assessment of your trade mark. Some of the options such as minor amendments to the goods/services can be actioned prior to payment of the Part 2 fee. If the amendments are substantial and/or complicated such as deleting a large number of goods/services or restricting the goods/services in a particular way these can only be discussed broadly during the TM Headstart (pre-application service) process. Additionally, because a trade mark is yet to be filed, it is not possible to consider submissions or evidence. These can only be considered following payment of the Part 2 fee.

If I use TM Headstart (pre-application service) will I get a positive result?

Not necessarily. TM Headstart (pre-application service) assesses the registrability of your trade mark under the Trade Marks Act 1995. If we consider your trade mark would face problems under the Act we will raise these with you when we contact you to discuss the assessment of your request.

If my trade mark is accepted how long will it take for it to be registered?

By using TM Headstart (pre-application service) your trade mark may be accepted quickly. However, the earliest your trade mark can proceed to registration is at least seven months after you have paid the Part 2 fee. This is due to the normal time allowed for the application process and the opposition period.

If my trade mark is registered, from what date does my protection start?

Your protection will start from the date the Part 2 fee was paid as that is the date you formally filed a trade mark application. A TM Headstart (pre-application service) request is not a trade mark application, so the date you filed your TM Headstart (pre-application service) request is not relevant.

What is a top-up search?

A top-up search of the trade marks database is done approximately ten working days after the Part 2 fee is paid. The top up search is done to locate any similar trade marks which were filed around the same time that you lodged your TM Headstart (pre-application service) request, but were not yet showing on the trade marks database.

Will my entry fee be refunded if I don't pay the Part 2 fee in time or if I don't get a positive result?

No. The fee you pay at the time of submitting your TM Headstart (pre-application service) request is for the assessment of your trade mark. Also, once the assessment of your trade mark has been completed it is not possible to refund the fee.

Will the details of my TM Headstart (pre-application service) request remain confidential?

TM Headstart (pre-application service) requests remain confidential until you pay the Part 2 fee. When you pay the Part 2 fee and convert the TM Headstart (pre-application service) request to a standard TM application, certain information in your application must be made available to the public. This includes your name and address and details of your trade mark. This information is published in the Australian Official Journal of Trade Marks, the Register of Trade Marks and in databases in Australia and elsewhere. Once published, this information is available both online and in paper copies availalbe for purchase. You may choose to use a post office box as your address if you have concerns about your residential address being published. For further information read our Privacy Policy.

Applying for a trade mark application

Can an applicant create a series application out of a standard application?

No. Trade mark applications cannot be amended to expand on the scope of the rights originally claimed. You cannot later add trade marks to the original application as this would expand the number of trade marks claimed on the application as originally filed.

Can I file all of my trade mark applications online?

The form has been designed to deal with the majority of applications and is structured to gather information for a basic trade mark application. Where application details are more complex, the form will dynamically change to meet the demands of the specific application.

Can I file an international application with different specifications for each designated country?

Yes, as long as the goods and/or services are included in the basic trade mark(s).

Can I withdraw one or more of the designated countries after protection has been granted?

Yes. You can withdraw countries at any stage, including at renewal time.

Can there be any differences between the trade mark on the international application and the basic trade mark; e.g. can I remove 'Made in Australia'?

No. The trade marks must be identical. When you are filing your national application and you think it may be the basic trade mark for an international application, you should ensure that you are only including trade mark material in your representation of the trade mark.

How will I know that you have received the application details correctly?

When you submit the form to the Office, you are given a numerical pre-filing number to enable you to identify your application to us if you need to make an enquiry. After receiving the form we record your details on our database, process the fee payment and allocate a trade mark number. You will then be sent a Notice of Filing by normal post which will advise the trade mark application number, provide you with a copy of the details of your application that are recorded on our database and briefly explain the examination process which all applications must undergo before being accepted for registration.

If I have difficulty completing the form, who should I contact?

If you have difficulties completing the form, for example "I am not sure what class my services fall in?", or "The form is telling me that my trade mark image is not in the correct format", please seek assistance from the Customer Support Centre on 1300 651 010.

Is a series application more expensive?

Yes. For more information read the Trade Mark fee schedule, including costs for a series application.

Should I have a basic trade mark that is an application or a registration?

You can have either, or in the case of multiple basic trade marks, a combination of both. However, it will depend on your individual circumstances and the likelihood of success of your application because of the five-year dependency period. Even if you wait until you have a registration, the five years still applies, and someone could take non-use action against your trade mark if you haven't been using it.

What constitutes a valid series application?

Firstly, trade marks in a series must closely resemble each other. Secondly, the trade marks must differ only in one or more of the following ways:

  • statements or representations as to the goods or services being claimed;
  • statements or representations as to the number, price, quality or names of places;
  • the colour of any part of the trade mark.
With these substantial restrictions on what sort of trade marks can form a valid series and additional costs involved in filing a series application, you should carefully consider whether your trade marks meet the requirements before filing a series application. If the series you file is not valid, the series fee is not refundable.

What happens if I file my international application based on a basic application and that application is restricted during examination, or fails to reach registration?

The international registration will be cancelled to the same extent as any restriction to the basic trade mark. This is because the examination process for your basic trade mark will have started within the five-year dependency period. For example; if your basic trade mark application and dependent international application are filed for the Class 9 heading, and your basic trade mark is restricted to telephones during examination, the international registration will also be restricted to telephones. The IB will notify all designated countries of the restriction.

What is the purpose or usefulness of series applications?

Under the Trade Marks Act 1995, you can apply for two or more trade marks that that closely resemble each other on one application. This gives you the option of covering different variations of your trade mark without having to submit separate applications for each variation. However, not all trade marks that closely resemble each other will qualify as a series. There are substantial restrictions on the type of trade mark variations that can form a valid series.

What trade mark transactions can I perform online?

You can perform a range of trade marks transactions online. These include:

  • Requesting an assessment of your proposed trade mark via TM Headstart (pre-application service)
  • Filing your application to register a trade mark
  • Paying trade mark registration or renewal fees
  • There is also an online facility for searching the Register of Trade Marks, called the Australian Trade Mark Online Search System (ATMOSS). You can also contact us electronically at any time, with any enquiry, via the email address assist@ipaustralia.gov.au.

Where can I find additional information and examples of valid and invalid series applications?

Further information and examples may be found in the Australian Trade Marks Manual of Practice and Procedure. This is a reference manual used by trade mark staff at IP Australia.

Will my application be processed faster because I have filed it electronically?

No. The Trade Marks Act requires that applications are examined in the order in which they are received. Electronic filing will simply be a more convenient alternative to the existing paper application form for those applicants with Internet access.

Assignment, transmission or sale of trade marks

Can you assign pending applications?

Yes.

Do assignment documents need to be original?

Either the original or a certified copy is needed.

Does the recording of a claimed interest or right remain on the register even when the trade mark is sold and the assignment recorded?

Yes, unless the recording of the claim is cancelled. The claimed interest or right is, however, notified of any assignment application filed.

How are records for partial assignments created?

A new trade mark number is created. The history of both the original and the new trade mark numbers are the same and upon recordal of the assignment, the goods or services of one are amended to reflect the relevant goods and services. The new application/registration is only for the assigned goods and services.

Liquidators. If there are no owners except the liquidators, can the liquidators assign the trade marks?

Liquidators have the power to transfer or assign the trade mark to anyone on behalf of the owners. Normal application forms apply. They should also note they are the liquidators on the form.

What is a 'certified copy' of an assignment document?

This is a copy which has been certified as being a true copy, eg. 'I hereby certify that this is a true copy'. Certification must be signed, dated and have the name of the certifier near the signature.

What type of transfer documents do I need to file?

The assignment application form should be accompanied by documentary evidence showing proof of title, such as deed of assignment, merger document, simple letter of assignment, probate document in the case of a deceased owner, or a declaration.

When is the applicant notified that an assignment has been carried out?

A standard letter is sent to the applicant's address for service when the assignment has been approved.

Who is the assignee? Is it the new owner or the old owner?

The assignee is the new owner. The assignor is the old owner.

Capable of distinguishing - what does this mean?

Can an applicant offer a disclaimer?

Yes they can but it will not affect the registrability of the trade mark. If the trade mark is not capable of distinguishing the goods/service, a disclaimer will not get it accepted. The trade mark as a whole is considered.

If a trade mark is not capable of distinguishing, does the application have any chance of getting registered?

It will probably mean that a ground for rejection will be raised in the examiner's first report. However, there are several ways of overcoming grounds for rejection through the provision of evidence of use of the trade mark. You can ring the examiner of the application for further information or alternatively you can discuss these options and their probable costs with a legal adviser.

What happens if part of a trade mark is not capable of distinguishing but the remainder of the trade mark is registrable?

Trade marks will be considered as a whole. The whole trade mark must be capable of distinguishing the goods/services. The overall registrability of the trade mark depends on the relative proportions of the elements within the mark, i.e. the size of the registrable component in relation to those element/s which are not capable of distinguishing. The overall impact of the trade mark on the potential user will be considered by the examiner.

What is meant by 'capable of distinguishing'?

Under the Trade Marks Act, if a trade mark is not capable of distinguishing the goods or services of the applicant, the trade mark must be rejected. Examiners rely on court cases and legal precedent in deciding whether a trade mark is capable of distinguishing, however one of the main criteria which is considered is whether other traders are likely, in the ordinary course of their business and without improper motive, to need to use the same or similar trade mark in relation to their own goods or services. Traders should not be granted a monopoly in words, expression or logos which other traders may legitimately need to use to describe their own goods or services.

Claimed interest

Can I still record my claimed interest in a trade mark with IP Australia?

Yes. We record claimed interest on the Trade Marks Register if those claimants wish to receive certain notifications under the Trade Marks Act 1995. If you ever intend or need to act upon your claimed interest, you will need to have had it recorded.

Do I need to file a copy of the agreement or mortgage document between the owner and the person claiming an interest?

Yes. If you are the claimant filing without the owner of the trade mark the Registrar needs documentary proof to be satisfied of the claimed interest. If it is a joint application with the owner of the trade mark documentary proof is not required.

Do you need to send in a copy of the mortgage through which you wish to claim an interest?

No. Just complete the appropriate form.

If there is a claimed interest on a registration and a second claim of interest comes in, is the person who made the first claimed interest notified of the second claimed interest?

No. We only deal with the individual claimant and the owner.

Where should I record my claimed interest in a Trade Mark?

All claimed interests in a trade mark must be recorded on the national online Personal Property Securities Register. As of 30 January 2012, the right of the registered owner to deal with the trade mark is limited only by those claimed interests that have been recorded in the PPS Register. If you ever intend or need to act upon your claimed interest, you will need to have it properly recorded. More information is available in the Official Notice. All interests currently on the Register of Trade Marks in a specific name can be identified by using the ATMOSS system. Select Advanced Search, ‘Claimed Interest Name’ and enter the name elements to be located.

Classes of goods and services

Can I add extra classes or additional goods/services to my application?

It is not possible to add additional goods or services to an application as this will extend the scope of the original application. If extra goods or services need to be added, a new application will have to be filed accompanied by the appropriate fee. If there has been an error in the classification of the application, a new class may need to be added to correct this error. This must not however extend the scope of the original application.

Can I add extra classes or additional goods/services to my trade mark if I've used TM Headstart (pre-application service)?

TM Headstart (pre-application service) allows for you to amend your claim for goods and/or services if necessary. Because TM Headstart (pre-application service) assessments happen before you officially file your application for registration, there is a small window of opportunity for you to make amendments. Depending on the nature of your amendment, you may have to pay an additional fee if it means there is additional searching or assessment necessary.

How do you work out if the goods or services are similar or closely related to those of another application?

Examiners rely on tests established through Court cases to see if goods or services are of a similar description. Some of the factors examiners consider are:

  • what do the goods/services consist of?
  • what is the origin of the goods/services?
  • what is the purpose of the goods/services?
  • are the goods usually made by one manufacturer?
  • are the services usually provided by one and the same business or person?
  • are the goods distributed by the same wholesale houses?are the goods/services provided from the same sources, during the same season, in the same area or district and to the same customers?
  • do the manufacturers, distributors or providers of the goods/services consider they belong to the same trade?
Examples:
  • 'metal blinds' and 'awnings' fall in different classes but are considered to be similar goods;
  • 'computers' and 'computer programming' are considered to be closely related goods and services;
  • 'business management consulting' and 'business training courses' fall in different classes but are considered to be similar services.
It is important to note that Court cases have observed that no single factor is conclusive in itself.

What is the official Goods and Services pick-list?

The official Goods and Services pick-list is an electronic tool designed to help you identify the classes of goods or services to which your trade mark applies. The pick-list is an optional component of the online filing facility. If you use the pick-list when making your application it will automatically classify your goods and services so that they are in the correct class at the time of filing your application. Your filing fees will be automatically calculated and there won't be any classification errors preventing acceptance of your trade mark application, though there may be other substantive issues raised. Using the Goods and Services pick-list also saves you money as a discount applies to applications filed using the pick-list facility.

Copyright v trade marks

What is the difference between trade mark protection and copyright protection?

Trade Mark registration provides the owner with legal rights to exclusive use, and/or control of the use of the trade mark throughout Australia for the goods or services for which it is registered. A trade mark has value as an asset so long as it is used by the owner for the goods or services registered. An owner has the right to legally protect their trade mark and may sue for infringement if another person uses their trade mark, or a similar trade mark, on the same or similar goods or services. A letter from a lawyer or patent attorney may be all that is needed to deter infringement. Copyright automatically gives you rights to the protection of your original works of art, literature, music, films, broadcasts and computer programs against copying and certain other uses. It protects the original expression of ideas, not the ideas themselves. While making copies of copyright material can infringe exclusive rights, a certain amount of copying is allowed under the fair dealing provisions of the legislation. Copyright doesn't protect you against independent creation of a similar work. Legal actions against infringement are complicated by the fact that a number of different copyrights may exist in some works.

Deferment of acceptance

If an applicant files a request for deferment on the final day of the 15 month period, how much time do they have left when deferment is terminated?

None. The time left when deferment is terminated is the time that remained of the 15 month period at the time deferment was granted. An extension of time should be filed in plenty of time so that when deferment is terminated, the application will not immediately lapse.

Divisional applications

What happens if I have a divisional of my basic trade mark within the five-year dependency period?

The divided application becomes another basic trade mark, as the goods and/or services covered by the international registration are now covered by two national trade marks. It should be noted that if the divisional application is restricted or lapses during examination, the result will also affect the international registration.

Extensions of time

For an EOT on an application which is beyond the 21 month period (under section 224), does the request need to be accompanied by a Declaration or can it be forwarded at a later date?

Regulation 21.25 states that the extension of time application must be accompanied by a Declaration.

If an extension of time is not granted, will the fees be refunded?

No.

What can an applicant do if their application is beyond 21 months and their reasons for more time do not fall within the grounds of section 224?

A divisional may be filed for the same trade mark and most, but not all, of the goods covered in the application. The original filing date is retained and the application has a further 15 months until acceptance. The divisional application must be filed before the parent application lapses.

Infringement

Can I take infringement action in my designated countries once protection has been extended?

This will depend on the national legislation in each of your designated countries. Any infringement actions you take must meet local requirements.

International trade marks

Are there any options if my international registration is restricted or cancelled because of central attack?

You have three months in which to apply directly to each of your designated countries to transform your international registration into a national application/registration. The process and fees for transformation vary between countries.

Does a refusal in one designated country impact on the others?

No. Each country will process your designation according to their own national legislation. It is therefore possible to end up with protection for different goods and/or services in different countries.

How do you 'attack' an international registration after the five-year dependency period?

You would need to challenge the protection granted in each designated country under the national legislation of those countries.

What does 'central attack' mean?

Central attack is any action against the basic trade mark during the five-year dependency period that ultimately leads to the restriction or cancellation of the international registration.

Multi-class applications

Are the classes listed in numerical order in a multi-class application?

Yes. See Regulation 4.4.

Is there a limit to the number of classes in a multi-class application?

No. An application can be filed in 45 classes if desired.

When can an applicant add classes to an application?

Classes can be added to an application if it is requested in the course of examination in order to rectify a genuine classification error. For example, if an applicant claims 'detergents for household use and for medical purposes' in class 3, they have the option of extending the application to include class 5 which covers 'detergents for medical purposes'. They must pay an extra fee. Alternatively they can delete this item from the application. The addition of extra classes cannot extend the scope of the original application. (see also Amendments@pre-publication) Note: Extra fees apply to the additional classes at registration and renewal.

Opposition

Are there fees to file an opposition?

Yes, there are fees for opposition proceedings.

What does opposition mean?

Opposition means a formal objection to an action.

Who can oppose?

Anyone may file an opposition

Why oppose registration of a trade mark application that has been advertised accepted?

The most common reasons are: - that the application is identical or very similar to another registered or pending trade mark or an international registration which is seeking or has gained protection in Australia - deception or confusion are likely because of the reputation of another trade mark in Australia - that the trade mark applicant is not the true owner of the trade mark

Ownership of a trade mark

How do I change the owner of my international registration?

Change of ownership requests can be made directly to the IB. You only make one request and pay one fee, and the IB will notify all designated countries. You can also lodge your request and pay the fee in Australian dollars through us if we are your office of origin. Each designated country can refuse to accept the change of ownership in that country if they have particular national requirements that have not been met.

Registration and renewal of a trade mark

Can I pay my registration or renewal fees online?

Yes, you can use our secure payment facility to pay registration and renewal fees.

How long does trade mark registration last?

A trade mark is initially registered for a period of ten years and continues indefinitely as long as the renewal fees are paid every ten years.

How much does registration cost?

Registration fees must be paid within 6 months of acceptance. The trade marks fee page and fee schedule list all applicable fees.

How much does renewal cost?

Renewal fees must be paid every ten years. The trade marks fee page and fee schedule list all applicable fees.

Revocation of acceptance

What are the reasons for revocation of acceptance?

An application can only be revoked if the Registrar is satisfied that it is reasonable to do so, taking account of all the circumstances involved, such as an error or omission during the course of examination. If information is received from examination staff, third parties or others with specialised knowledge that calls into question the acceptance of the trade mark the application may be revoked. A change of opinion or failure to consider earlier precedent cases is not held to be an omission.

What is revocation of acceptance?

The acceptance of an application can be revoked, i.e. withdrawn, if information comes to notice after acceptance which indicates that the trade mark should not have been accepted. Revocation of acceptance means that the application no longer carries the status 'Accepted' but re-enters the examination stream with the status 'Under Examination'. The applicant is notified of the proposed revocation and is advised of any conditions under which the application can remain accepted. The applicant is also given the opportunity to be heard in the matter. One month is given for the applicant to respond. If no response is received, acceptance is revoked and the revocation is advertised in the Official Journal.

Trade Marks for Plants

I have registered my plant variety under PBR, and have given it a PBR name. I want to register some different words as a trade mark. Can I do this?

It is possible for different words to operate as a trade mark, even if they are applied to a single plant (your registered PBR variety). This will depend on how you use and protect it. The words should be used to indicate the plants of one trader, rather than name the plant (which may be obtained by that name from a number of traders). However, if the words are simply replacing the PBR registered name, they will be acting as an alternate name or synonym, and will be difficult to register as a trade mark.

I saw a plant trade mark registration with an endorsement saying it wasn't to be used as the name of a plant variety. I know the trader is using it in this way. Does this trader have trade mark rights?

This endorsement is called a 'condition of registration'. If the trader is not complying with the condition of registration, not only will their registration not function as a trade mark, but their trade mark rights could be open to challenge.

If I am the breeder of a new plant and have made up a name for it, why can't I protect the name as a trade mark?

Even though you have invented or contrived the words you are applying to the plant, the issue is the way those words relate to the plant. If the words are applied to the plant for the purpose of naming or describing that particular plant, it cannot act as a trade mark because it will not distinguish the goods of one particular trader.

Why was my trade mark application rejected on the basis that it is a plant name when another one that I know is in use as a plant name was accepted?

All applications undergo the same examination process. If there is no clear evidence of use as a plant name available at the time of examination, an application may be accepted. However, if the owner of that trade mark subsequently uses it to name or describe a single plant, not only will their registration not function as a trade mark, but their trade mark rights could be open to challenge.

Types of trade marks

I filed my trade mark in colour. Does filing a colour representation limit my rights in my trade mark?

Not usually. Unless otherwise specified, trade marks are registered in respect of all colours, whether or not you filed your trade mark in colour. Section 70 of the Trade Marks Act specifies: A trade mark may be registered with limitations as to colour. The limitations may be in respect of the whole, or a part, of the trade mark. To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours. You may file your trade mark application in black and white, or greyscale or colour. Unless for a particular reason your trade mark is limited to a particular colour or colours, your rights extend to all colours.

Can I use my trade mark in other fonts?

Protection given by registration of a work in ordinary typescript or basic cursive handwriting is likely to extend to that word in other commonplace fonts or obvious presentations. If your registration is for a word in plain typescript and you use your trade mark in a very unusual or fanciful font you may not be covered by your registration. Similarly, if your registration is for a word in a fanciful or particular unusual font and you may use your trade mark in a different fanciful or unusual font this may not be covered by your registration. If you would like clarification on this issue, you may wish to seek legal advice from a Trade Mark Attorney or a legal practitioner familiar with trade mark law.

I filed my trade mark in colour. Does filing a colour representation limit my rights in my trade mark?

Not usually. Unless otherwise specified, trade marks are registered in respect of all colours, whether or not you filed your trade mark in colour. Section 70 of the Trade Marks Act specifies:

  1. A trade mark may be registered with limitations as to colour.
  2. The limitations may be in respect of the whole, or a part, of the trade mark.
  3. To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.
  4. You may file your trade mark application in black and white, or greyscale or colour. Unless for a particular reason your trade mark is limited to a particular colour or colours, your rights extend to all colours.

What are shape trade marks?

Shape trade marks are three-dimensional. Examples of shape trade marks include bottles, toothbrushes, biscuits, chocolates and pens.

What are the requirements when applying for sound and scent trade marks?

To be registrable a trade mark must be able to be represented graphically and this also applies to sound and scent trade marks. This means that a trade mark must be able to be represented by symbols in the form of diagrams and/or writing.

  • Sound trade marks must be represented by a precise description of the sound. If the trade mark contains music then it can be represented by musical notation and accompanied by a description along the lines of 'the trade mark consists of the tune as played on a trombone' represented on the application form.
  • A sound can also be represented by words (eg. Clip, Clop, Moo) and must include an accurate description of the trade mark, eg. 'the trade mark consists of the sound of 2 steps taken by a cow on a pavement, followed by the sound of a cow mooing'. The description of the trade mark will be entered on the Register as an endorsement.
  • Scent trade marks can be represented by a precise verbal description of the scent. The application should include the trade mark represented graphically (eg. 'the scent of apple blossoms') and a precise and accurate description ('the scent of apple blossoms applied to car tyres') which will be entered as an endorsement.

What is a collective trade mark?

A trade mark used or intended to be used in relation to goods or services provided by members of an association, to distinguish those goods or services from those provided by persons who are not members of an association. Applications for collective trade marks will in the main be dealt with in the same way as ordinary applications.

What is the difference between a body corporate and an unincorporated body?

A body corporate is a legal identity separate from the people who are members of the body corporate. A body which is not a body corporate, does not have a separate legal identity to its members. Its members must therefore carry any liability incurred by the association both as an association and as individuals.

What limitations are there on the use of 'Olympic' trade marks?

The Olympic Insignia Protection Act 1987 states that the Australian Olympic Committee (AOC) is the national owner of the Olympic rings symbol and the Olympic motto. The AOC also owns ten registered Olympic designs and a number of torch and flame designs. Only the AOC can use and license the use of the symbol, motto and Olympic designs to other parties. The Olympic Insignia Protection Act 1987 was amended in October 2001 and in part now protects the use of the word "Olympic", "Olympiad" and their plurals and "Olympic Games" in advertising and promotion. To use these Protected Olympic Expressions a licence is required from the AOC. Full details can be found on the AOC website, www.olympics.com.au For limitations on the use of Olympic expressions as covered under the Olympic Insignia Protection Amendment Act 2001 please refer to the IP legislation section of our website. For further information, contact Alan Grover, Group Manager Brand Protection and Special Projects at the AOC on (02) 8436 2172.

What should I consider when applying for a scent or sound trade mark?

As with all trade marks, if the sound or scent is one that other traders would normally want to use in respect of their goods or services, or if it is descriptive and common to the trade, then it will have difficulty getting registered, eg. a dial tone for telephone services or a lemon scent for cleaning products are both common to the trade and would be very difficult to register. The provision of evidence of use may overcome the grounds for rejection of such a trade mark. For more information contact the examiner of the application or legal practitioner.

What sort of things should I consider if I am filing a shape trade mark?

  • you need to consider if the shape is something that other people need to use. Does an object have to be that particular shape if it is to work properly?
    • you need to consider if the shape is common to the trade eg. a wine bottle
    If a shape trade mark falls within these parameters then there may be difficulties in trying to distinguish that shape from other shapes, and therefore there may be difficulties in registering the trade mark. The applicant will need to show that the shape does distinguish their good/services-that is, that the shape will identify the goods/services as originating from the applicant. This may be through the provision of evidence of use. The examiner of the application or a legal practitioner should be contacted for further information.

What sort of things should I consider when applying for a colour or colour combination as the actual trade mark?

  • There should be no genuine need for the colour within the relevant market. Do manufacturers within the industry typically colour their products this way?
  • The colour must not be essential to the use or function of the product. Do others need to apply that particular colour on their product for it to function properly? Eg. yellow or orange for safety products If a colour trade mark falls within these parameters then there may be difficulties in trying to distinguish that colour from other colours, and therefore there may be difficulties in registering the trade mark. The applicant will need to show that the colour does distinguish their good/services- that is, that the colour/s will identify the goods/services as originating from the applicant. This will be through the provision of evidence of use. The examiner of the application or a legal practitioner can be contacted for further information.

What types of trade marks would be difficult to register?

Those trade marks which indicate: kind - This includes the name of the goods or services and any component which indicates the size or type of goods or service, eg. sedan for cars. quality - Laudatory words are commonly used by traders to extol the virtues of their goods or services, eg. superior, good, best and number one. quantity - Indications of quantity, including reference to numerals, are needed to indicate volume, area, model or batch number, and would be unlikely to function as trade marks, eg. 25's for cigarettes. intended purpose - Words which describe the function of the goods or the result of a service are not capable of distinguishing, eg. sticks to metal for glue; roach-free for a pest control service. value - Words which emphasise the worth, importance or value of a product or service, eg. worth their weight in gold. time of production -Trade marks which refer to a time frame when the goods were produced or when the services are to be available, eg. ready in one hour for drycleaning services. geographic origin - Although geographical names have the potential to be registrable, traders will generally not be able to obtain a monopoly on the name of a place or region with a reputation for the designated goods or services unless overwhelming evidence of use is provided, eg. Hunter wines. It is worth noting that if the geographical origin has no relationship to the goods at all (ie. North pole bananas) then it may be registrable. surnames - This depends on how common the surname is. Please note: Although these types of trade marks may have grounds for rejection raised against them in an examiner's first report, these may be overcome through the provision of evidence of use or other special circumstances. You may ring the examiner of the application for information on overcoming problems in the application or alternatively you can consult a patent attorney or legal practitioner on these matters.

Who can apply for a collective trade mark?

An association, whether incorporated or not, may apply for a collective trade mark. The application must be made in the name of the association and not in the name of an individual or individuals. Associations may choose to apply for standard trade marks since collective trade marks can not be assigned, transferred or sold.

Last Updated: 15/9/2012

Meet Rajaram
Bachelor of Engineering (Electronics & Communication)

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