Trade marks examined: the ins and outs

Published: 
4 May 2015

trade mark is used to distinguish your goods and services from someone else's and is enforceable under intellectual property (IP) law. Protecting your trade mark will protect the identity of your goods and services, and prevent others from imitating your brand!

For example, the Lonely Planet ® logo is a registered trade mark for travel guides. This protects the owner from other businesses using the Lonely Planet trade mark. If you need exclusive rights to prevent others from commercially using your name, much like Lonely Planet, it’s a good idea to register your name as a trade mark.

It is also important to consider what you would like to trade mark. The best trade marks are those that are distinctive and say nothing about the goods and services they are applied to, such as KODAK. Trade marks that are descriptive may have difficulty being accepted for registration as it would prevent other companies from describing similar products registered in the same class An example of these terms in the case of KODAK would be ‘film’ or ‘camera’. Let’s get started…

So what is a trade mark?

Any feature (or combination of features) that distinguishes your goods or services from others can be registered as a trade mark. This can include a letter, number, word, phrase, sound, smell, shape, logo, picture or aspect of packaging.

A registered trade mark is legally enforceable. It gives you exclusive rights to prevent others from commercially using your trade mark. It also gives you the right to licence or sell it for the goods and services that it’s registered under.

Why would I need a trade mark?

If you want to prevent others from using your business name and/or branding in Australia you should register it as a trade mark.

Protecting your trade mark is extremely important as it protects your brand reputation  and the goods and services that brand is applied to.

By registering your trade mark, you have the legal right to prevent others from commercially using your trade mark. You also have the right to license or sell it within Australia for the goods and services for which it is registered. A trade mark is protected in all Australian states and territories for an initial period of 10 years.

How much does it cost?

In general, the minimum cost to register a trade mark is around $400 ($120 to apply for each class and an  additional $300 per class when it is accepted).

Registration lasts for 10 years from the date of the application.

The costs will vary depending on how broad the protection you are seeking is. Goods and services are grouped together in classes (e.g. clothing, footwear and headgear is in one class, whereas software is in another class). The more classes of goods/services in an application, the greater the fees.

How long does it take?

Your application will generally take three to four months to be examined from the day they are filed.

All trade mark applications are examined and if accepted, there is a two month period in which they can be opposed. Opposition allows anyone to challenge the rights you are seeking.

How do I register?

Before you commit to registering a particular trade mark you can conduct a comprehensive search in ourAustralian Trade Marks Online Search System (ATMOSS) to make sure the trade mark you want to use is available. This search will provide you with both registered trade marks and trade marks that have already been applied for. You can also use TM Headstart (pre-application service) a service we offer to assess the potential registrability of your trade mark before you decide to file your application.

To register your trade mark you need to file an application. This can be done online through eServices.

What do I need to know about opposition?

An opposition to a trade mark is a formal objection of an application to register a trade mark, remove a trade mark from the Register, an extension of time of more than three months or an amendment to an application. Anyone can make an opposition to a trade mark.

If you face an opposition, you will be required to provide evidence. Once the evidence stages have progressed, either party can request a hearing and make submissions to support their side of the opposition. This can be by oral or written submissions.

Oppositions can be lengthy, complex and has fees involved. It may be in your best interest to seek the assistance of an IP Professional.

An important tip before applying

It is important to make sure what you want to trade mark doesn’t already exist. If you're considering applying for trade mark protection and securing your own slogan or brand name - TM Headstart (pre application service) is a great place to start. You can lodge a TM Headstart (pre-application service) for $120 and have a trade mark examiner do a check on your behalf.

Alternatively, you can do your own search on ATMOSS, before investing in a name for your business or product.

More information