What is a trade mark?

A trade mark is a way of identifying a unique product or service. It can be a letter, number, word, phrase, sound, smell, shape, logo, picture, aspect of packaging or any combination of these.

In order to be capable of registration, a trade mark must distinguish the goods and services of the owner from the goods and services of other traders. Good examples include the apple logo used by Apple Inc. to market its computers, and the Nike logo (the famous Nike tick).

In Australia, the registration of trade marks is managed by IP Australia, a government agency that administers intellectual property (IP) rights and legislation relating to patents, trade marks, designs and plant breeder’s rights.

Why is it important to register your business’s trade mark?

Your trade mark is your brand. In short, it is your identity. It is the way you show your customers who you are, and distinguishes your goods and services from your competitors’. Quite often, it is your most valuable marketing tool.

For this reason, you should protect it.

There are many benefits to registering a trade mark – e.g.:

• it gives you the exclusive right, with certain exceptions, to use your registered trade mark as a brand name for the goods and services specified in the registration

• a registered trade mark is personal property and can be sold

• a registration usually covers the Commonwealth of Australia.

Most importantly, registration makes it easier to prevent people from using your trade mark as their brand name on the goods or services covered by your trade mark registration. This is because it is protection against misrepresentation under trade practice or fair trading legislation. While you don’t have to register your trade mark to use it, it can be expensive and time consuming to take action under the common law.

How does Monardo Solicitors approach trade marks?

Traditionally, only larger companies saw the value of registering their logos and brands in Australia and internationally. For individuals and small businesses, the cost of taking such a step was prohibitive.

However, things changed with the boom in online businesses and the emergence of apps. As a result, the concept of having a brand has become a lot more important to small and medium-size business owners, and they have become more aware of the importance of protecting their businesses by registering their trade marks.

At Monardo Solicitors, we believe that businesses of all sizes should be able to register their trade marks and, in this way, protect their IP. That is why we offer a simple, efficient and cost-effective service enabling businesses to register their trade marks – our online trade mark registering service, Trade Marks R Us®.

Our services include:

• advice on whether your trade mark can be registered

• filing applications for trade mark registration with IP Australia.

Finally, our litigation and dispute resolution team can assist you if you discover that your trade mark has been infringed.

What is the difference between trade marks, business, company and domain names?

Ideally, you should secure the same name for your trade mark, business, company and domain names.

However, it is important to understand that only a registered trade mark gives you the exclusive right to use your trade mark throughout Australia. If someone infringes your trade mark, by copying it, or using it without your permission, you have legal grounds to stop them.

It is important to understand that business, company or domain names do not provide this type of protection.

What is the process for registering a trade mark in Australia?

Through Trade Marks R Us®, we undertake the following process to register a trade mark.

Step One: You fill in the trade mark application form on our website

Step Two: We undertake research into your trademark, to find out whether it can be registered

Once we receive your trademark application, we carry out the following searches to ensure no other person has an interest in the same name, or similar names, as your trade mark:

• Australian trade mark search

Once we have undertaken the necessary searches, we will inform you whether your trade mark is likely to be approved by IP Australia or whether another person has a prior interest that could affect your ability to register your trade mark.

Step Three: We advise you on in which trade mark class your trade mark should be registered

As soon as we have completed our searches and have advised you that you can proceed with your trade mark application, we will advise you in which trade mark class you should register your trade mark.

The trade mark register is divided into 45 trade mark goods and services classes.

Step Four: We lodge the application with IP Australia

Once we have selected the applicable classes for your trade mark, we will prepare and file your application with IP Australia.

Step Five: IP Australia examines your trade mark application

Your trade mark application will then be examined by a trade mark examiner at IP Australia.

Step Six: IP Australia advises you on the outcome of your trade mark application

Usually, the examiner will let you know within three to four months whether your trade mark meets the requirements for registration of a trade mark.

If the examiner rejects your application, you will have the opportunity to submit further evidence regarding the merits of your trade mark application.

Step Seven: Advertising of your trade mark

If your trade mark is accepted by IP Australia , it will be advertised in the Australian Official Journal of Trade Marks for a period of two months

During this period, anyone can oppose the registration of your trade mark.

Step Eight: Registration of your trade mark

When the two-month advertising period has elapsed and no objections have been lodged, your trade mark will be registered (after payment of the registration fee).

How long does a registration of a trade mark last?

Once registered, a trade mark will be in force for ten years from the date of application. At the end of the ten-year period, you can renew your trade mark for a further period of ten years.

Can a trade mark be cancelled?

There are two situations where a trade mark can be cancelled.

First, a trade mark can be cancelled if it has not been used for a continuous period of three years.

Second, a registration may be cancelled if the trade mark has become a generic name for goods or services to which it is applied.