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© 2018 Halfords IP - Patent & Trade Mark Attorneys

Trade Marks

Take steps to protect your brand...before someone else does! 

About Trade Marks

A Trade Mark is used to distinguish the goods or services of a particular trader from those of other traders.

 

A Trade Mark Registration provides you with the exclusive rights to prevent others from using a substantially identical or deceptively similar Trade Mark.

Getting started

1. SELECT A TRADE MARK

 

A Trade Mark can include words, phrases, initials, images, graphics, logos, colours, shapes and smells, or any combination of these.


2. START WITH A SEARCH

 

It is highly recommended to conduct a Trade Mark clearance search prior to any use of a Trade Mark. This should mitigate the chance of legal action, which can lead to product recall, re-branding and damages payments.

 

3. CHOOSE THE CLASS(ES)

 

The Trade Marks Office uses a classification system, which has 45 different classes of goods and services. The fees for filing a Trade Mark Application depend on the number of classes in which the application is filed.

The registration process

 

After the Trade Mark Application is filed, it will undergo an examination process.

A Trade Mark will not be registered if:

 

  • it is likely to be needed by other traders in the ordinary course of trade, e.g. descriptive words or symbols, surnames, place names;

 

  • the Trade Mark is substantially identical to one already used in Australia by another owner, for the same goods/services;

 

  • the Trade Mark is confusingly similar to an earlier registered mark or pending application by a different owner, for goods or services closely related to those of the application; or,

 

  • use of the Trade Mark is likely to cause confusion, in view of established use of a similar mark by another owner.

 

Once accepted for registration, the Application will be advertised, and, provided no Opposition is filed, the Trade mark will be Registered.

 

Trade Marks can be renewed indefinitely, provided the Trade Mark is being used, and the renewal fees are paid every 10 years.

Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc.

©2018 Halfords IP 

Protection overseas

An Australian Trade Mark Registration only protects you in Australia.

 

If you wish to protect your Trade Mark overseas, you will need to file separate overseas Trade Mark Applications in the countries of interest or you may be able to file an International Application designating countries that have signed up to an International Agreement. 

 

Australia has an international agreement allowing Australian Trade Mark applicants to file Trade Mark applications within the first 6 months of the initial Australian Trade Mark application, while retaining the original priority date of the Australian case.

 

Each overseas application will go through a separate examination process according to the Trade Mark laws of the relevant country, before being registered.

 

Trade Marks can be renewed indefinitely, provided the mark is in use, and subject to the payment of periodic renewal fees, typically every 10 years.

Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc.

©2018 Halfords IP 

Trade Mark FAQ

WHO CAN APPLY FOR A TRADE MARK?

A Trade Mark can be owned by an individual or a company who is using or intending to use the Trade Mark. The Applicant cant be a business name or trading name, but should be the owner of the business registration.


CAN I STILL GET A TRADE MARK REGISTERED IF I HAVE ALREADY COMMENCED USING MY TRADE MARK?

 

Yes…unlike Patents and Designs, a Trade Mark can be filed at any stage. For Startups, it is often prudent to initially focus on protecting your inventions first, and then later look at Trade Mark protection.

 

HOW LONG DOES IT TAKE TO GET A TRADE MARK REGISTERED?

The registration process can be reasonably quick, typically only a few months, but does depend on the Trade Mark Office backlogs.


HOW LONG DOES MY TRADE MARK REGISTRATION LAST?

Australian Trade Marks are registered for a period of 10 years from the application date, and are then renewable for 10 yearly periods upon payment of a renewal fee.

 

You must continue to use your Trade Mark, otherwise it is vulnerable to be removed from the Trade Marks Register.

 

WHEN DO I NEED TO FILE OVERSEAS TRADE MARK APPLICATIONS?

 

An Australian Trade Mark covers Australia only. If you wish to protect your Trade Mark in other countries, you need to file applications in the countries of interest.

 

Australia has international agreements allowing Australian Trade Mark applicants to file Trade Mark applications in most foreign countries within 6 months of the first Australian Trade Mark application while retaining the original priority date.


WHAT IS THE DIFFERENCE BETWEEN A BUSINESS NAME AND A TRADE MARK?

Registering a business name is not the same as registered a Trade Mark.  It gives you no right of action against others.

 

In order to trade legally in Australia under a name other than the actual name of a legal person (an individual or a company) a "Business Name", must be registered.  A search of registered Business Names throughout Australia can be made with the Australian Securities and Investments Commission (ASIC).  To gain registration, a search is conducted to determine whether the name is the same as, or confusingly similar to, an existing registered Business Name in the same state or territory or the name of a registered company.

 

The registration system simply enables the public to identify the person(s) behind the Business Name.

 

The registration of a Business Name provides no rights to the name as a Trade Mark.