Understanding trade marks

Your brand is your identity and it's worth protecting. Learn the basics of trade marks and whether they're right for your business.  

What are trade marks?

Protecting your brand can be one of the best investments your business can make, but is it the right decision for your business?

Our trade marks webinar explains:

  • The basics of trade mark protection

  • What can and can’t be trade marked

  • What to consider before you invest in your brand.

You'll learn:

  • What is a trade mark and how it's a business asset

  • The difference between business names, domain names and trade marks

  • What to consider before you invest in your brand

  • What the costs are

  • How to choose which goods and services to apply for

  • Why and how to search the trade marks database

  • How to apply for a trade mark

  • What trade mark examiners look for in your application.

Understanding trade marks

Want to learn more?

Got a burning question? Here's the answers to our most frequently asked questions.

Will my trade mark be protected overseas if registered in Australia?

No, only within Australia. To register your trade mark overseas you can apply directly with each IP office, or file an international application if those countries are parties to the Madrid System.

 

What is the Madrid System?

Under the Madrid System, you can register and manage protection of your trade mark in multiple countries at the same time in one application.

The Madrid System

 

Do I need to apply for an international trade mark if I’m only using my trade mark in Australia?

If you're operating within, and only providing your goods and services within Australia, then an Australian registration is often sufficient. However, if you're advertising or trading online, jurisdictional boundaries aren't always clear. Therefore, if you're intending on offering goods online and shipping purchases internationally, you may wish to seek legal advice as to how you can protect your interests and ensure you don’t infringe anyone else’s trade marks.

 

What happens to a registered trade mark if a company is sold?

A registered trade mark can be sold with the business or retained by its original owner. If it's sold with the business then the trade mark registration must be transferred to the new business owner. This is called an assignment. 

Update your trade mark

 

If a trade mark is not registered but in use, can you legally copy it?

Australia has a “first to use” trade mark system. In a dispute, legal rights in the trade mark are recognised for the party who demonstrates first use of it in the Australian marketplace. 

For example, Company A has used their trade mark for several years. Company B is in the same industry. They come up with a new trade mark and discover it's the same as Company A’s. Company A hasn't registered their trade mark and so Company B files an application for it. What happens next? The Trade Marks Act 1995 provides several ways for Company A to prevent the registration of their trade mark by Company B. This can extend to court action. Trying to appropriate someone else’s trade mark can be extremely costly, both financially and in terms of relationships with others in the trade.

Trade mark owners have some common law rights and there may also be issues around copyright law. If the trade mark you wish to use is already in use by another party, it's vitally important to get legal advice from an IP professional regarding the ramifications of knowingly adopting and using that trade mark. You should do this even if you believe the other party’s goods and/or services are unrelated to your own. 

 

My trade mark has lapsed. What do I need to do to renew?

If it's less than six months after the date your renewal was due, you can still renew it by making your renewal payment through online services. You'll be required to pay late fees in addition to your renewal fee.

If it's more than six months after the expiration date of the registration, then your trade mark will have been removed from the register. You'd then have to file a new trade mark application. 

 

Can I register a trade mark that's already being used overseas?

If the trade mark you wish to use is already in use by another party in any jurisdiction you should get legal advice from an IP professional. Trying to appropriate someone else’s trade mark and register it in Australia may lead to costly court proceedings.

It's important to remember that the trade marks register doesn't provide a full picture of the marketplace. It doesn't tell you about unregistered trade marks or provide information about an overseas company preparing to enter, or expand their activities in, the Australian marketplace. 

 

My trade mark covers numerous classes. Do I need to register for them all and how do I do this?

The question to ask yourself is: what do my customers pay me for? Think about the goods or services that are the reason your business exists, as opposed to goods or services that you may provide because they are part of running that business.

For example, you may use your trade mark on your own business cards and invoices, but are you a company manufacturing or printing business cards and stationery for others? You might deliver your goods to customers who purchase them, but do you provide delivery services generally? Your IP professional can help you understand where the line exists.

As part of the trade mark application process you'll select the goods and services for which you wish to register the trade mark. The easiest option is to use the picklist. Our system automatically notes how many classes you have applied in and calculates your application fee accordingly.

 

If I decide to modify my brand or expand my business, will I need to apply for a new trade mark? 

Sometimes you can amend your existing application or registration to substitute a new version of your trade mark, but if the changes are substantial you may need to file a new application. It costs nothing to submit an amendment request and if the amendment isn't possible you'll receive a letter explaining why and what your options are.

For goods or services, consider whether your existing application or registration already includes the new goods or services you are providing. If not you'd need to submit a new application.

For example, if you start a clothing line using your coffee shop’s trade mark, that won’t be covered by your registration for your coffee shop services and will mean a new trade mark application is needed.

You can contact us for help in understanding the scope of your specification and what options you have, but you may still wish to seek legal advice to help you decide what is best for you. 

Update your trade mark

 

Related content

Trade marks Apply

What are trade marks?

A trade mark protects your company's unique brand, products or services.

Trade marks Enforce

Advanced trade marks: enforcement

14 September 2022

Applying for a trade mark is great for your business but it’s also important to keep it protected. Here's how to effectively enforce your trade mark.  

Trade marks Enforce

Advanced trade marks: oppositions and hearings

15 September 2022

You've got a trade mark, but what if it's being challenged? We've got you covered with all the tools you'll need to take action.