Trade Marks

Trade marks are used to distinguish a business’s goods and services from other traders.

Alder IP works with its clients to develop effective protection strategies in relation to logos, slogans, product names and business names.

A registered trade mark gives a legally enforceable right to commercially use, license or sell goods and services that it is registered under.

For further advice, please contact Alder IP to discuss your business goals in relation to trade marks.

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

An application is lodged with the Australian Trademark Office (IP Australia). The application needs to include all of the details of the Applicant and their street address. The application needs to include the actual trademark to be registered. The trademark can be a slogan, a unique word, a logo, colour, 3d design, sound or even a smell. A Patent Trademark Lawyer and Sydney Trademark Attorney may be able to assist you with the filing process for trademark applications and they are highly recommended if trade mark is difficult to register.

The Application must designate which goods and services you are either using or intend to use the trademark with. You also need to indicate which international class these goods and services fall within.

After the application is filed, you have six months with which to file overseas trade mark applications based on the original application in Australia. If you do so, your international application will be backdated to the original filing date in Australia. You can file overseas trade mark application after the 6 month deadline; however you will not be able to backdate the overseas application to your original filing date. Failure to use the priority dates in overseas application can sometimes lead to unscrupulous operators overseas stealing your trademarks in overseas jurisdictions.

IP Australia examines all trade mark applications to confirm its compliance with the law. They specifically look into issues of comparing with existing trade mark applications, queries of distinctiveness, and whether the trade mark is otherwise against the law. An examiner from the Trademarks Office issues a full written report as to their findings and the Applicant has typically 12 months from the date of the first report to overcome all of the Examiner’s objections.

If the Applicant overcomes all of the objections, the trademark is accepted for registration and published. Third parties have 3-6 to months oppose your application. Through this stage, any third party can file an opposition against the registration of your trade mark. The grounds for these types of oppositions are set out in the Trade Marks Act (Cth). To minimise the opposition period, it is important that the trade mark registration fee is paid prior to the first three months after acceptance and in this way the application will automatically pass to registration at 3 months rather than waiting the 6 months.

If there are no third party oppositions, the Application then pays a registration fee and the application is granted for 10 years.

It is important to note that the applicant must pay a renewal or maintenance fee every ten years to keep the trade mark registration enforce.

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