Australian Trade Mark Registration
Registration of your brand as a trademark is an important step in protecting your business and, while making a trademark application in Australian is a relatively simple process, there are some important steps to consider before lodging an application that if followed may end up saving you a lot of time, money and heartache.
Step 1: Understanding if your brand is eligible to be registered
The key purpose of a trademark application is the use of a mark to distinguish, in the mind of the consumer, the difference in origin of the good or service they are purchasing from those of others providing the same goods or services. While simple words may be used, they can not be commonly used terms in the area for which you are seeking to use the mark. For example, you could not register the phrase “cats and dogs” for a new line of pet food, but you may be able to use “mountain high” for the same product.
Some terms are not distinguished by their meaning or idea which they portray. You can not register purely descriptive words that relate to the type, quantity or quality of the goods or services on offer. No one can claim a monopoly to geographical indicators such as towns for regions. Particularly challenges exist with registration of colours, sounds, shapes or smells, unless they are very unique or you have developed a reputation for such marks.
So the first step in assessing your proposed mark is to ensure it is one that can distinguish your services or goods from others.
Step 2: Deciding who will be the owners of the mark
When making any trademark application it is important the rightful owners of the marks are listed as the applicant. Disputes regarding ownership can result in a mark being withdrawn from registration. In some cases a mark may be required to be registered in the name of a number of owners.
While determining ownership rights for your mark may seem simple, in Australia, trademark rights are provided to those that are first to use a mark and not those that are first to register the mark. This is why it is important to complete a search of registered marks and non-registered brands before making an application or actively promoting your mark.
Step 3: Understand the services or goods for which your mark will be used
The first question we ask is, how do you intend to use the mark? Trademarks are registered for specific categories of goods or services that best describe how the mark will be used. There are 45 classes for goods and services and it is important to select those classes where you will use or intent to use the mark.
Ideally you do not want to be too specific in the description of the class used as this may narrow the scope of your protection. Also, if you select a class and fail to use the mark in that selected area, you risk of removal of the mark for non use.
Step 4: Deciding on the type of mark that best suits your business
A business’s reputation may be best represented by a name or logo. In some cases, a tag line may be just as important. A particular shape of a product or packaging may also be registered if that is what is recognised as a key distinguishing feature of your product against others in the market and is something your consumers recognise. A defining colour, scent, movement or sound may also be important to protect.
So it is important to decide what mark is a critically important feature to your business in defining it against your competition or others in the a market. If you are seeking to lodge a number of marks that are similar, then the option to apply for a series of marks may be possible.
Step 5: Search for the same or existing marks
The core purpose of developing a trademark is to secure a means to distinguish your goods and services from others. Registration of a mark is not possible for the same or similar marks that will be used in the same class of goods or services. This is why it is important to conduct a search of registered marks before applying.
When developing a new brand, trademark searches should form part of the process in selecting a final brand. Professional searches consider variations in the appearance, phonetic sound or shape of the mark. As Australia provides rights to a trademark based on those that are first to use a mark, professional trademark searches will also review no-registered use of proposed marks.
Without a professional search, you could be wasting your money in developing and applying to register a mark.
Step 6: Lodging an Application
When you are ready to lodge a trademark application it is important to assess the risks of success for each element of your brand. A suitable strategy needs to be developed for word marks and any associated logo, tagline or slogan that is to be used with the mark. When an application is to be made across a number of classes, it is often best to divide an application across each class so as to avoid risk of the application being rejected.
Step 7: Acceptance or managing objections to your application
The trademark office will assess your application and if they see no reason for opposing the application you will receive a notice of acceptance. This is an important first step in gaining registration.
If the office does not accept your application, they will write to you indicating the reasons for objection. In many cases they will cite a section 41 objection, suggesting the mark is not capable of distinguishing the goods and services from those of others, or an objection under section 44 indicating that the mark is similar to other registered marks.
Various strategies can be used to overcome such objections depending on the exact reason of the objection. While simple amendments to an application can be used to overcome some objections, in other cases submitting evidence of prior use or evidence of the reputation that you have developed from use of the mark may be important in overcoming objections. Options for removal of cited marks for non-use may also be considered.
Developing the right strategy and process for overcoming objections is important. You may have at least 15 months to reply to these objections, but it is important not to wait as you can submit a number of responses to objections in this timeframe.
Step 8: Registration or overcoming opposition to your registration
After your application has been reviewed and accepted, the trademark office will then advertise the mark providing others the opportunity to oppose its registration. If no one opposes the registration of your mark, congratulations are in order! Upon payment of final fees your mark will be registered for a period to 10 years and you have the right to use the symbol ® with your mark.
Other persons or businesses may oppose registration of your mark for a number of reasons. The most common reason is that they feel the proposed mark is similar to a mark or brand they own or may be used in the the same area of business (class of goods or services) for which your application has been made. The opponent may submit that the proposed mark is likely to deceive or cause confusion as to the origin (owner) of the goods or services for which the mark represents.
While various strategies can be used to overcome an objection, it is important to recognise that the opponent must provide evidence to support their reasons for opposing registration of a mark. Responses are then focused on the claims made by the opponent. Strict timelines exist to manage any opposition so it is important to get the right advice as soon a possible.
Renewal of Registration
In Australia, trademark registration exist for a period of 10 years. It must be renewed to retain registration for a further 10 year period and for each subsequent 10 year period.
Certification Trade Marks
Certification trademarks are marks that are used to represent a set standard or objectively verifiable characteristic for a goods or service. Special conditions apply for the registration of a certification trade mark including the requirement that the rules and conditions for use of the mark been reviewed and approved by the Australian Competition and Consumer Commission (ACCC).
Are you considering a trademark application or developing a new brand?
If you are thinking about making a trademark application or are about to develop a new brand, even if you are in the process of developing a new brand, we recommend that you carryout a trademark search. A trademark search can ensure that the brand under development or the trademark you want to register, has the best chance of successful registration. Talk to us about a trademark search today – it could save you a lot of money and frustration.