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What is a trade mark?
A trade mark can be any word, name, signature, device (e.g. a logo), brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of these things, including a three dimensional object or design.
There are two fundamental requirements a mark must meet to be capable of registration:
- the mark must be capable of being represented graphically; and
- the mark must be capable of distinguishing your goods or services from those of other traders
Often a mark will be regarded as incapable of distinguishing particular goods or services from those of other traders because the mark is descriptive of the goods or services it represents. A mark that is regarded as not capable of distinguishing may become distinctive and capable of registration with significant use over time. Evidence of such use would have to be filed with the Trade Marks Office in order to render such a mark capable of registration.
The Classes
Marks are registered in specific classes. By international agreement, all goods and services to which marks can conceivably be applied are divided into 45 classes. Classes 1-34 cover goods and classes 35-45 cover services. It is possible to apply to register a mark in multiple classes on the same application. The classes are the same from country to country which makes registering in other jurisdictions a relatively simple process.
Set out here is a list of the classes with brief descriptions of the goods and services in each class. While this is not a comprehensive list of goods and services, it gives a general idea of the breakdown of classes.
Trade Mark Search
It is extremely important to conduct a trade mark search at the time of selecting your business or product name or logo. A search of the Trade Marks Register and a common law search for businesses with common law unregistered trade marks serves two important purposes:
- It ensures that your name or logo will not infringe that of another business, whether or not you choose to register it as a trade mark; and
- It gives you an indication of whether there are any registered trade marks that are sufficiently similar to your name or logo to prevent its registration as a trade mark.
It cannot be stressed enough how important it is to have a search conducted before you start expending money on printing, advertising and PR. The courts hear many disputes arising because businesses didn't check to see if a name was being used by someone else before launching their product.
It's not just the possibility of an infringement dispute that should be of concern. What happens if your name is so similar to someone else's that they attract your customers, particularly if their products are not to your standards? The potential damage to your reputation is substantial.
» Order a Trade Mark Search Online «
Registering Your Trade Mark
Registering a trade mark in Australia is a relatively simple, but sometimes lengthy process.
Once an application has been lodged with the Trade Marks Office it is referred to an examiner who will either accept the application for registration or issue a report outlining the reasons why the mark is not acceptable for registration. At present an application will be examined by an examiner approximately 3 months after filing.
The examiner may issue a report requesting a clarification of the description of goods and services, listing registered trade marks and applications which conflict with the mark, and/or setting out queries as to whether the mark is capable of distinguishing your goods and services.
We can then make submissions to the examiner addressing these issues. It is not unusual for one to three reports to be issued before a mark is accepted for registration, and this can take up to twelve months to finalise depending on the issues raised by the examiner. A maximum of fifteen months after the issue of a first examiner's report is allowed to finalise an application.
While your application is going through the examination process your mark is protected against applications filed after it (with the exception of foreign convention priority filings), regardless of how long the examination process takes.
Once the examiner's objections have been overcome, the application is advertised in the Official Journal of Trade Marks and, for a period of three months, is open to objections from members of the public. If no objection is received, the mark will be registered on payment of a further Trade Marks Office fee. The total elapsed time taken from the application to the registration is normally between seven months and two years.
» Apply online for Trade Mark Registration «
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