When should you talk to a trade mark attorney?

Choosing when to trade mark an aspect of your business comes down to your future plans as well as those of your competitors – what should you consider?

When to trade mark your business features.

Trade marks are a way of legally protecting your business identity. You can trade mark a logo, name or even a sound. Registering your organisation's trade marks at the right time is essential to ensure you have the flexibility to adjust your business plans ahead of start-up, while also stopping competitors from getting in before you.

What can you trade mark?

Many people think of business names when they think of trade marks. While you can, and often should, trade mark your company name – you can also protect other distinctive aspects of your business brand.

For example, Coca Cola trademarked their bottle shape and the term "coke". Delivery firm UPS trademarked their brown colour, while jewellery brand Tiffany's protected their distinctive blue-green branding. You could also trade mark a logo, phrase or shape, amongst other things.

However, what's commonly misunderstood is that a trade mark doesn't grant you the right to use it exclusively. It just means that no one else in Australia can use the trade mark for the same types of goods or services that you registered it for. If they do, you have the legal protection you need to challenge them.

Coca Cola have trade marked the distinctive bottle shape.Coca Cola have trade marked a number of features including the distinctive bottle shape.

When should you lodge your trade mark application?

There's no definitive answer as to when you should seek to register your trade mark. It really depends on how your business is developing and what your competitors are doing.

You do not need to have formally registered your company or have an Australian Business Number (ABN). However, if you have yet to get to this stage of setting up your business, consider what might change. Part of your application involves registering under certain categories of goods or services. If this or anything else about your company might change, it could be worth waiting a little longer. You'll waste a lot of time and money trade marking something you need to change a couple of months later.

From this perspective, it's worth waiting until your business is about to start trading or is already operational before making your trade mark application.

However, should you have any concerns about your competitors using a similar brand name or logo, or feel that someone else may be onto the same idea – you should consider getting your application through more quickly.

Keep in mind that the application will take a number of months no matter which stage you apply at.

If you are about to expand, or start using your name, logo, colour or other identifying feature more widely, you may want to protect it before more people become aware of it. Similarly, you should be aware that using a feature another company are in the process of trade marking could see you in trouble with their legal team.

Keep in mind that the application will take a number of months no matter which stage you apply at.

How do you register a trade mark in Australia?

Registering a trade mark gives you the exclusive right to use it within Australia for ten years. You can renew it as many times as you need to. Anyone else using your trade mark is breaking the law. The basic process for registering a trade mark is as follows:

  • Check that no one else has already trade marked your asset.
  • Decide what you want to associate the trade mark with – for example a postal delivery service or high-end jewellery products.
  • Lodge an application to IP Australia.

If your trade mark application is accepted, the Australian Official Journal of Trade Marks will add it to their list of accepted applications. At this point, anyone who wishes to file an opposition can do so. Assuming no one challenges your application, you trade mark is formally registered as soon as you pay the associated fee.

Register your trade mark with IP Australia.To register your trade mark, apply to IP Australia.

Trade marking your property internationally

If you want to protect your brand outside of Australia, you have two choices. You can apply directly to the specific countries you're interested in, or file through the World Intellectual Property Organisation (WIPO).

The WIPO administer what's known as the Madrid Protocol – an international treaty for trade mark registration. It allows business owners to file requests with multiple countries through one application. Once again, your registration is protected for ten years. However, you must already have filed in Australia and the details of what you want to protect must be the same. 

Protecting your trade mark

Simply registering your trade mark isn't always enough to prevent other people using it. Although you're entitled to exclusive use for ten years, other people can lodge a claim against you if they can show you're not actually using it. If this happens, you'll need to speak to a lawyer with experience in trade mark law. 

However, it's a good idea to consult with the experts from day one. It can be quite complex to determine which class you should register your trade mark under and decide whether or not to branch out into international waters. The situation only gets more confusing if another company has trade marked a similar feature and may take issue with your application or use.

At Alder IP we're highly experienced in every aspect of trade mark law. To make an appointment to speak to a member of our team, contact us today.