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Trade Marks
What is a trade mark?
Trade marks are fundamental in building a distinct product identity in Australia. A trade mark is a sign or symbol used to distinguish your products or services. Common types of trade marks include words, logos, slogans, sounds, shapes, and smells.
Registered trade mark rights
Trade mark registration grants the owner exclusive rights to use the trade mark for the goods or services covered by the registration. Trade mark registration lasts 10 years and can be renewed every 10 years for a fee. If someone else uses your registered trade mark, it becomes an offence under the Trade Marks Act 1995 (Cth).
Sometimes, an unregistered trade mark may hold enough inherent value to gain legal protections. However, unregistered trade marks can be inherently difficult to enforce. We always recommend securing registered trade mark rights to protect your product or service.
Registrability of trade marks
Not every trade mark is registrable. A trade mark must distinguish your goods or services from those of other traders. A trade mark acts as a badge of origin, indicating the course of the goods or services.
Generally, a trade mark must meet two requirements to be registrable: (1) it must be distinctive in relation to the goods or services for which you are registering it; and (2) it must not conflict with an earlier filed registered trade mark.
Non-distinctive trade marks
Non-distinctive trade marks cannot act as a badge of origin and are often incapable of distinguishing your goods or services. Non-distinctive trade marks often include descriptive marks, geographic names, shape marks, and colour marks.
Conflicting trade marks
A trade mark application conflicts with an earlier application if the trade marks are deceptively similar or substantially identical and cover the same or closely related goods or services.
Trade marks are considered deceptively similar if they so nearly resemble one another that they are likely to deceive or confuse consumers. Deceptively similar trade marks may include those with similar phonetic, visual, or dominant features, or those that convey similar ideas or overall impressions.
Goods or services are considered closely related if they are similar in nature, target similar consumers, or share similar trade channels.
Registering a trade mark with IP Australia
Alder IP can assist with trade mark registration. The first step is to file a standard trade mark application. In the application, we must define the goods or services to which your trade mark applies. It’s essential to accurately define the goods or services because your registration only covers those specified in the application.
IP Australia will then examine your trade mark application under Australian trade mark law. If it passes examination, your application will be accepted. After acceptance, there is a two-month opposition period during which any third party can oppose the registration of your trade mark. Once the opposition period expires, your trade mark will be registered. Trade mark registrations must be renewed every 10 years.
Headstart application
A headstart application is a preliminary and unofficial trade mark application filed with IP Australia. IP Australia will provide a preliminary opinion on registrability within one week of filing. After receiving the preliminary opinion, the applicant can pay a Part 2 fee to establish an official filing date, converting the application to a standard application. The standard application must undergo the full examination process.
Overseas trade mark applications
There is no international trade mark protection. Trade marks must be applied for and protected in each country. Applicants have six months from the Australian trade mark filing date to file overseas trade mark applications claiming priority from the base Australian trade mark application. ‘Claiming priority’ means the overseas trade mark application(s) will be afforded the Australian filing date. The filing date is important because it is used to assess whether your trade mark conflicts (is deceptively similar or substantially identical) with another trade mark.
Overseas trade mark applications can be filed directly with each national trade mark office or through the Madrid Protocol Pathway.
Madrid Protocol pathway
A Madrid Protocol application is a streamlined way of filing overseas. We file a Madrid Protocol application through the World Intellectual Property Organisation (WIPO), designating your selected jurisdictions. WIPO then forwards the Madrid Protocol application to each national trade mark office, which examines the application for compliance with local trade mark laws.
Filing through the Madrid Protocol pathway is often more cost-effective than filing directly in each country.
However, not every country is a party to the Madrid Protocol. Notable exclusions include Canada, Malaysia, South Africa, and Hong Kong.
Maintaining trade mark registration
Even after registration, applicants can lose their trademark if it is not used. Anyone can file a non-use action against your trade mark registration, and you may need experienced trademark attorneys to defend against it. Additionally, if you do not renew your trademark before the 10-year period expires, you will lose your registration. There is a six-month grace period during which you can renew your trademark after it expires, but this will incur additional costs.
We strive to find the best fit for intellectual property and match it to your business goals and milestones.
- Anthony Alder
Principal and Founder
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Specialists in Patent and Trademark Law
