Trade marks are a fundamental part of building a distinct product identity in Australia. Also called a brand, an Australian trade mark distinguishes your goods and services from other third-party traders, and will typically apply to a word, logo or sound. However, the applications of trade mark law are wide-ranging.
Alder IP are registered patent and trade mark attorneys delivering expert, specialist services in an exciting and innovative way. Approved by the Professional Standards Board and with vast experience in trade mark legislation (including the Trade Marks Act and IP Australia regulations), we are perfectly poised to assist with your trade mark queries. This includes TM Headstart objections, claims against your trade mark, defending a removal claim and disputes over an existing trade mark or international issues.
What is a trade mark?
A trade mark is not just your company or domain name – it can grant you a limited monopoly on a word, slogan, phrase, sound, smell, shape or logo. A trade mark can even be a distinct aspect of your packaging.
When you register a trade mark, you gain the rights to use it for a period of ten years (with renewal periods). If someone else uses your trade mark, even unwittingly, it becomes an offence under the Trade Marks Act 1995. In some cases, even a trade mark without registration will hold enough inherent value to gain legal protection. However, it’s always a good idea to secure a trade mark to protect your product or service.
Common law or unregistered trade marks are sometimes protectable under the Tort of Passing Off or Competition and Consumer Act 2010.
How can you register a trade mark in Australia?
In Australia, the Trade Marks Act 1995 and Trade Marks Regulation 1995 dictate the use of the tool. To register your own, it is first a good idea to search the trade mark database at IP Australia. You will then need to decide what goods or services you will associate the mark with, and then make an application to IP Australia.
Generally, a trade mark needs to meet two main requirements to be registrable: a) it must be distinctive in regard to the goods and services for which you are registering it; and b) it must not be able to reasonably confusing with a pre-existing trade mark already on the register.
Can you register a trade mark overseas?
A standard trade mark will only hold power within Australia. To register a trade mark overseas, you must either apply directly in the destination country or use The Madrid Protocol. This is a treat administered by the World Intellectual Property Organisation (WIPO), based in Geneva.
Before applying directly or through WIPO, we highly recommend seeking the services of trade mark lawyers.
Some countries are not a party to the Madrid Protocol system and the most important countries include Canada and Malaysia. For these countries, individual country applications must be filed directly with the trade mark office in that country.
Can you lose a registered trade mark?
Even after registration, applicants can lose their trade mark registration through non-use. Anyone can lodge this claim, and you may need experienced trade mark attorneys to defend against this. Additionally, you will lose your registration if you do not renew it before the 10-year period expires.
There is a six-month window in which you can renew a trade mark after expiry, but this will incur more costs.
In some countries such as USA and Philippines, you must use or intend to use the trade mark prior to registration before the respective trade mark office will register it.
Why use Alder IP as trade mark attorneys?
The Australian trade mark sphere is one with many conflicts. Similar trade marks, logos and slogans too close to an overseas product or service trying to expand, or disputes over non-use frequently arise and require the assistance of experienced trade mark lawyers.
With competitive pricing, tailored service and a willingness to go the extra mile to do right by our clients, we can help you resolve any trade mark dispute.