My Web Stats

Research & Publications

Intellectual Property Law

February 2011

Trade Marks in Australia

What is a trade mark?

A trade mark is a sign used to distinguish the goods or services of one manufacturer or seller from those not produced by that manufacturer or seller. The application of a trade mark to goods or services adds to their value. A trade mark can be in the form of a word, phrase, letter, number, sound, scent, logo, picture, symbol, shape, colour and aspect of packaging or any combination of these.

Do I need to register my trade mark?

Registering your trade mark will give you the exclusive right to use, license or sell that mark within Australia for the goods and services you have registered. A business name, domain name or company name, whether or not it is registered will not give you any equivalent proprietary rights. Although you can protect your rights in an unregistered trade mark under the Trade Practice Act 1974 or at common law, it is easier and more cost effective to protect your rights in a registered trade mark under the Trade Marks Act 1995.

What are the benefits of registering my trade mark?

Generally, a proprietor of a registered trade mark can stop other persons form using similar words on goods and services that are the same as or closely related to the goods or services for which the trade mark is registered. However, if your trade mark is well known in Australia then you as the proprietor may be able to prevent another person from using the same or similar words on goods or services that are unrelated to your registered goods or services.

Where another person has infringed the trade mark rights of a registered proprietor, the proprietor may be entitled to legal relief in restraining the further infringement and compensation for the damage suffered as a consequence of the infringement.

A single registration of a trade mark is valid throughout Australia and and its territories. You may only use the ® symbol once you have registered an Australian registered trade mark.

The application process

IP Australia maintains a database of all registered trademarks and most applications for registration. This database can be searched to determine whether or not your proposed trade mark may be refused on the basis of it being identical or confusingly similar to an existing registration or application.

Filing the application

To prepare and file your application, which we can sign on your behalf, we need the following information:

  1. A clear representation of the trade mark that can be photocopied / printed.
  2. Applicant's legal name, description and principal place of business.
  3. If the trade mark is a sound or scent, a detailed description of the trade mark.
  4. If the trade mark is a three dimensional shape, a graphical representation of the trade mark from each spect.
  5. A list of the goods and services upon which you propose using the trade mark.
  6. If priority is to be claimed pursuant to the Paris Convention for an earlier application in another jurisdiction, the details of that prior application.

Examination Reports

All applications will be examined by IP Australia and this usually occurs within 2-3 months of the application being filed. Most applications are accepted at this stage. In some cases the examination will result in an adverse report by IP Australia and if the examiner raises some objection you will have 15 months to respond or the application will lapse. You may request an extension of this time period. The objections may be based on the lack of distinctiveness of the trade mark or similarities between your trade mark and earlier registrations or applications. You may need to file evidence of your earlier use of the trade mark to overcome some of the examiner's objections.

Acceptance

Once the examiner's objections have been overcome, or in the absence of any objections, the application will be published in the Australian Official Journal of Trade Marks. For three months after publication the application may be opposed. If there is no opposition then your trade mark will be registered at the expiry of the three months and the certificate of registration will be issued, once you have paid the registration fee. You will have six months from the date of publication of the application however, delaying payment of the registration fee may provide an opportunity for another person to file an opposition as any application can be opposed up until the registration certificate is issued.

Please Note: The information contained in this article is general in nature and cannot be regarded as anything more than general comment. Readers of this article should not act on the basis of this comment without consulting one of iLaw’s legal practitioners who will consider their particular circumstances