How to Register a Trade Mark

Registering a trade mark is the only way to guarantee you have exclusive rights to your brand name, logo and other business assets. Having an unregistered mark does not give you any rights under the trade marks act that you can enforce the only claim in such a situation is undertaking a claim of passing off and misleading and deceptive under the Australian Consumer Law. This in itself is difficult to prove especially for a start up as you need to demonstrate that you have a significant market reputation.

So have you ever wondered how to register a trade mark in Australia? In this post, we talk about trade mark registration and why you should consider this legal process as a way to protect your business, products and services.

Trade Marks

A trade mark is a legal way of owning and distinguishing the name, goods and services your business advertises and provides. A trade mark can be more than just a business name or logo. You can trade mark words, phrases, movements, sounds, images and smells. As an example Hasbro has also trade marked the play doh scent (sweet, slightly musky, vanilla-like with slight overtones of cherry and the natural smell of a salted, wheat-based dough).

Basically, any feature or combination of features that separate your business from the pack can be registered as a trade mark. You can even trade mark aspects of packaging if applicable!

There are two types of trade marks, registered trade marks and common law trade marks (unregistered):

• Registered trade marks are the bonafide trade marks that have been approved by IP Australia and feature a ® symbol.

• Unregistered trade marks are protected by common law and feature a TM  symbol.

The difference between registered and unregistered trade marks

It boils down to this. If you have a registered trade mark and another business is infringing on your rights, you can take immediate legal action under the Trade marks Act 1995 .

If you have an unregistered trade mark you need to bring action under section 18 of Australian Consumer Law. In this situation you need to prove “passing off” (another business trying to masquerade as you). To do this you need to prove ownership of the trade mark in question and prove damage to reputation/goodwill and deceptive conduct on the part of the defendant. In short, it’s a lot harder to defend the honour of unregistered trade marks.

If you are still confused? Think of it this way, a registered trade mark is like being married and an unregistered trade mark is like being de facto. The married person has clearer rights and privileges than those in de facto relationships even though both situations are observed under common law.

The benefits of registering a trade mark

When you register a trade mark in Australia your asset is protected nationally and you have an automatic right of action if your precious asset is exploited by third parties without authorisation. When you have a registered trade mark the law is basically in your favour and automatically presumes the third party is seeking to confuse and deceive the public.

So let’s say you sell shoes, that feature a unique blue sole that is trade marked. Let’s call this blue shoes, “Blue Shoes”. If another company begins to sell “Blue Shoes” with the Blue Sole then you can call them out and show your registered trade mark, requesting an immediate cease and desist. You can also sue for damages.

If you don’t have a registered trade mark, in this situation you’d need to prove you own the phrase “Blue Shoes” and the blue sole is your unique identifier,  and prove that it’s unique to your brand, prove that you’ve established a reputation around the phrase and more. All the while your copycat can keep selling “blue shoes” with the blue sole.

Overall, when you have a registered trade mark you have control over how it is used and presented in the marketplace. With a registered trade mark can better protect your brand identity because you’ll have the paperwork to back it up. But keep in mind if another person is marketing and selling the same branded product as yours in another country than enforcement is a whole lot more difficult, unless you have a registered trade mark in that country. By registering a trade mark in Australia this only gives you rights in Australia only, there is no such thing as a globally registered trade mark, unless your a multi national like Coca Cola who have trade mark registrations and rights in just about every country there is. However if you are planning to manufacture and export your product overseas than you will want to consider registering your trade mark in those countries you undertake business in.

How to register a trade mark in Australia

In Australia, trade marks are registered through IP Australia. The process is as follows:

1. Search IP Australia’s trade mark register to ensure no one has trademarked your asset

2. Understand the type of trade mark you are applying for and define which goods and services classes your trade mark will fall under. This can be complicated if in doubt contact the Foundd legal team for help!

3. Apply for a trade mark. Trade marks can be owned by individuals or businesses.

4. Wait to discover whether or not your application has been approved.

Once an application is submitted it is examined by IP Australia. This process can take 3-4 months after filing. If your application is accepted then you are sweet-as. Your trade mark will be entered into the Australian Official Journal of Trade marks and listed on IP Australia’s trade mark registry. Upon registration, your trade mark will be protected for 10 years.

If your application is rejected you’ll receive correspondence that outlines grounds for rejection. You will need to respond to this communication and in our experience, this is extremely difficult if you are not experienced in trade marks law and not a legal practitioner. If this happens to you Legum ILP is here to help and can assist in your response to IP Australia and advise on the possibility of overcoming the opposition. Grounds for rejection can be because your proposed trade mark is not distinctive enough or it’s is too similar or identical to another trade mark.

All in all, we highly recommend registering a trade mark for your business whether it be a brand name or logo, a signature scent or a special coloured sole for shoes! Registering a trade mark will protect your business and is generally a good investment in yourself. Over time a brand’s identity can become invaluable. You want to protect it from day one so that when you increase your brand position in the market you are protected.

Why Invest Money in a Trade Mark Attorney

Engaging a professional Trade Mark Attorney or Intellectual Property Lawyer is the difference of getting it right with professional expertise and a set strategy or going it alone and spending significant money in dealing with an opposition or worse yet finding your self in the Federal Court deep in litigation. Our firm deals with Trade Marks on a daily basis and from start to finish we look at the genuine possibility of the trade mark being accepted or the mark being rejected in which we explain why and what other avenues there are for your brands protection and overcoming an opposition.

If you have any lingering questions about trade marks or are keen to register a trade mark and are unsure where to start, do not hesitate to contact our trademarks team We offer a initial consultation for all new clients.