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.

1.              Searching the mark before you apply 

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.

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, as they may have rights under 'common law' to the name/logo etc. Our comprehensive search also details a number of appropriate domain names that may or may not be available to you, with regard to your trademark.

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 per class 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.

At this stage, 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.

Once the application has been filed, the government office will issue their official filing details within two weeks, essentially to 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 place approximately 3-5 months after an application is lodged, 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 adverse report, it means that a problem has been found. Our office will attend to minor problems on your behalf at no extra cost to you.

Should you receive a major objection, it is not necessary to employ the expensive services of a Trademark Attorney or Trademark Lawyer. Our office can 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. We recommended payment of the registration fee before the three-month period is over to 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 not use this symbol before your trademark is officially registered, as it is an offence to do so.

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!