|
THE TRADEMARK PROCESS -
FROM START TO FINISH!
WHAT IS A
TRADEMARK?
You can trademark business names or company
names. You can trademark logos you use. You can have a product
trademark, or a brand name trademark, a trademark can be a
slogan or tagline you might use, or a colour or smell associated
with your products. Even a shape or aspect of packaging can be a
trademark. For example, if your product packaging includes a
distinct pattern, this would be
'trademarkable'.
Essentially, a trademark is the distinct
component you use in the market place to gain recognition. Federal
trademark protection is the only protection that gives you
exclusive ownership rights to that name, logo or slogan
etc.
HOW DO YOU REGISTER A TRADEMARK
IN AUSTRALIA?
1. Searching the mark before you
apply
Before officially applying to the federal
trademark office for registration of your trademark, we strongly
suggest having a thorough search
conducted.
Why? Due to processes and treaties in place
with international offices, it takes a
minimum of 7 months to fully register a trademark in
Australia. By having a thorough search conducted first, you will
know the chances of successful registration in a matter of only
days.
We offer two types of
searches:
COMPREHENSIVE SEARCH
We will conduct a thorough search of the
trademark registry held by the government office of trademarks
in Australia, the records held by ASIC concerning
business and company registrations, as well as popular internet
search engines and report to you on any trademarks found as
well as any other business we can find (if any) that appears
to be similar to yours even if they do not have trademark
registration.
BUDGET SEARCH
We will conduct a thorough search of the
trademark registry held by the government office of trademarks
in Australia only. We will report to you the results of this
search, and provide a brief summary of recommendations for filing
the application including our suggestion on classes to
consider.
Please read the conditions for the budget service before deciding
if this is the option for you.
Click here to download the budget trademark search
form.
Unlike business or company name registration,
it can sometimes be difficult to register your trademark if a
similar mark is already in place. Our report will advise you of
options to overcome difficulties if any are found. We will also
advise you on matters other than conflicting trademarks that may
cause problems or difficulty in registering your
mark.
Trademarks will be considered similar only if
registered in respect of the same or related goods and/or services.
All products and services are separated into
classes (there are 45 classes in total), and
trademarks are registered in respect of classes applicable to their
business. For example, if your trademark is the name for a new
clothing label, one class will apply. However, if your trademark is
also used to identify the name of a shop, then a second class will
apply. Our reporting letter will provide you with information as to
which of the 45 classes will best protect your
trademark.
2. Filing an Official
Application
Once the search is finalised, or if you choose
not to have a search conducted, we can file an application with the
government office on your behalf. It is at this stage, the classes
mentioned on the previous page become most relevant. At the time we
file the application we must specify which of the 45 classes we are
applying under. A fee is charged
perclass required at this
stage.
At the same time we forward our search
results, which will include our suggestion as to which class or
classes you should consider, we will also forward the relevant
instruction form to proceed with the filing of the official
application.
If you elect to proceed under the
Comprehensive Service then our office will be listed as your
address for service automatically at no additional cost to you.
However, this will be an optional service if you are filing under
the Budget structure. See our fees page for further
detail.
At this stage, under the comprehensive
service, you will be given the option of a ‘specific’ filing,
or a broader more protective filing:
Specific
Filing:Essentially, this means when you complete your
form to proceed, you must list as many specific items that you wish
to be protected for. We will use this list within the application.
You will be covered only for the items you
list.
Broader
Filing:Essentially, this means that instead of having
to be very specific in the goods/services, we can draft a much
broader description that will give you better protection now and in
the future, rather than locking you into the narrower list of
items.
PLEASE NOTE:UNDER THE BUDGET SERVICE ONLY THE SPECIFIC FILING WILL BE OFFERED TO
YOU
Click here to download the budget application form.
3. Government
Examination
Once the application has been filed, whether
you elected for our budget or comprehensive service, the
government office will issue their official filing
details within two weeks to essentially acknowledge the
application as filed and to allocate your official trademark
number. This number remains for the entire life span of your
trademark.
The government office will then ‘examine’ your
application. This is to ensure that it complies with the rules and
regulations of trademark registration, and to ensure there are no
other issues that should prevent registration. The results of this
examination will mirror those provided by our office at the search
stage in most cases. The examination conducted by the government
office will take approximately 3-5 months, at which time they will
forward either an ‘acceptance letter’, or an ‘adverse
report’.
If your trademark is accepted, it means that
no problems with the application or the trademark have been found.
Once accepted, your trademark will be advertised in the Official
Journal of Trademarks on a date specified at that time. Once
advertised, a formal ‘opposition period’ will follow. An opposition
period is for three months and means that any third party can file
an official objection against your trademark becoming
registered.
If the government office issues an examination
report, it means that a problem may have been found. If you have
elected to file under the comprehensive structure to begin with,
our office will attend to minor problems on your behalf at no extra
cost to you. If you chose to file using the Budget system, and
elected our office as your address for service we will attend to
this on your behalf at no extra charge. However, if you nominated
yourself as address for service you will be required to attend to
the matter yourself.
Should you receive a major objection,
regardless of the fee structure it is not necessary to employ
the services of a Trademark Attorney or Trademark Lawyer. Our
office can of course assist you.
If we are recorded as your address for service
we will advise you of the exact information required at such
time and guide you through the process. If you provide sufficient
evidence, the government office will then accept your trademark and
it will go through the 'advertisement' and opposition period as
described above.
Please
Note:Additional fees may apply for our office
handling major objections on your behalf.
4. Registration
Once your mark has been accepted, and
presuming no third party objects to your registration during the
standard three-month opposition period, your trademark will become
registered for a period of 10 years from the date of filing once IP
Australia (the government office) has receipted the final fee. The
final fee may be paid before the opposition period expires. It is
recommended that you pay the registration fee before the
three-month period is over so that you avoid persons being able to
file a late objection. However, if you choose to pay early and your
application is opposed, a refund of the government fee will be
given.
Once the fee is paid and all compulsory time
frames have expired, you will be sent an official Certificate of
Registration. Once you receive your certificate you may begin using
the ® symbol that you may have seen with other company’s brands. In
fact, we encourage you to do so as much as possible. Use of this
symbol will deter many people from 'stealing' your trademark. You
may notuse this symbol before your trademark is
officially registered. It is an offence to do
so.
Click here to download the budget registration form if
you have a trademark that has been
accepted.
What Happens
Next?
As stated above, your trademark will be
registered for a period of 10 years. You may renew the registration
every 10 years, indefinitely, if you wish to maintain rights to the
name or logo etc. If you are no longer using the trademark in 10
years time, you do not have to renew your registration, you may
simply allow your trademark to 'lapse'. There is no need to cancel
or withdraw registration if you cease use
sooner.
You will need to ensure that any changes to
your trademark details. I.E. The owner changes, your contact
details change or your 'use' changes are reported so that the
new information may be attended to
accordingly.
Make sure you continue monitoring your field
for any competitors that may adopt use of the same or similar
trademark. Should this occur there are avenues we can take to stop
them from using your trademark. This is known as "Trademark
Infringement" and is not allowed!
|