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Australian Trademarks

What is a Trade mark and How To Register A Trade Mark in Australia?

The trade mark laws operating in Australia define a trade mark as:

“A sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

A sign, for the purposes of trade mark registration can be pretty much anything – a word or words, a logo (comprising words and imagery or style), an image on its own, a colour, a shape, an aspect of packaging and even smells and sounds can be registered as trade marks. The key is to ensure that your ‘sign’ is capable of distinguishing your goods/services.

This means it needs to act as a ‘badge of origin’ for those goods or services, something that lets consumers and others know that the product/service belongs to you. It is therefore more difficult to register a trade mark if it is, or has as its main element/s, something that other traders would honestly need to use to describe their goods/services of the same or similar nature to yours.

Who can own a trade mark?

The making of an application in itself is confirmation to the trademark office that you use, or intend to use the trade mark for the goods/services that are relevant. The ‘rightful’ owner is usually the one that adopted the trade mark, or has permission to file on behalf of another person. A trade mark can be challenged by other parties if they believe that you are not the ‘rightful owner’ of the trade mark, or that the application has been made in bad faith.

The owner must be someone (or an entity) that has a legal status such as an individual, a group of individuals or an incorporated body (such as a Pty Ltd or Limited company).  As a rule, the right to own property, including trade marks, falls to whoever is the business registrant.  Note that a business name cannot own a trade mark. If unsure ‘who’ is the correct owner of your trade mark, please contact us and we are happy to advise accordingly.

How To Register A Trade Mark in Australia

Step 1 – Trademark Search

We consider that a trade mark search should head your ‘to do’ list when considering a new name for a business, company, product or service. If your preferred name is too similar to other Australian trade marks you could not only have difficulties in securing rights, but you may be infringing another person’s rights and face action because of it.

Ensuring your chosen trade mark is available and is not infringing anyone else’s rights provides you with peace of mind to know that your ‘brand’ won’t be stepping on any toes, and that it can become your property and business asset.

Even if you have been using your ‘brand’ and promoting it for some time, difficulties can arise so a trade mark search should always be considered.

The official examination with the government office once you file an application can take a long time (usually around 4 months) so you may wish to know where you stand sooner and our various searches can provide you with this information.

Our office offers a Free Trademark Search, which is often a good first step, as this will rule out any obvious issues.

Step 2 – Filing the Application & Classes

As trade marks are ‘signs’ used to distinguish the goods/services of different traders, it follows that when you file an application you must advise what those goods/services are.

All goods and services fall into ‘classes‘ that have been listed and put in place under an international agreement. The list of classes and the goods/services that fall into them have been adopted by a majority of countries around the world. There are 45 of these ‘classes’ to select from. Numbers 1-34 cover goods and numbers 35-45 cover services. A part of our search process (regardless of the type of search you select) is to provide recommendation on which classes you require.

When we prepare and file applications for Australian trademarks in order to meet the basic filing requirements, we must advise the trademark office of the class number and provide a specification of the goods/services being claimed with the class/es. By employing our office to file the application on your behalf, we will attend to this for you.

Further, by employing our office to file the application we will be listed as your agent on the official record as the “address for service”. This means all government correspondence will come to our office for attention – it also means that in the event another party wishes to query, contact or challenge your trademark they should contact us rather than you directly. By receiving all communication for you we can review, report and advise accordingly.

Step 3 – Government Examination (Report or Approval)

After your application is filed the government office must examine all of the details to ensure that:

  1. The basic filing requirements are met; and
  2. To ensure that your trademark is registrable

This process currently takes around 4 months – a time frame that does fluctuate. Once examination is complete, we will receive an ‘adverse report’ if there are any problems found, or a ‘notice of acceptance’ if no problems are found.

Notice of Acceptance (approval)

If no issues are found during the government examination of your application – or if you successfully address any issues that are raised – a notice of acceptance will be issued. This will advise of the date on which the acceptance of your trademark will be advertised in the Official Journal of Trademarks. The advertisement of acceptance commences a period of time during which other people may lodge formal objections to your trade mark becoming registered, if they believe they have grounds to do so. They will have 2 months from the date of advertisement to file a notice of intention to oppose. Once a notice of intention to oppose has been filed, the ‘opponent’ must then lodge their statement that sets out the grounds, and particulars upon which they oppse.

If nobody lodges a notice of their intention to oppose, or do not request an extension of time in which to lodge their objection, your trade mark can then progress to full registration.

Step 4 – Registration & Rights

Once Australian trade marks are accepted for registration and, assuming not opposed by a third party (or, if you are opposed but come out as the successful party) the trade mark can then proceed to registration. This will not occur for around a minimum of 7.5 months.

The initial period of protection is 10 years from the date the application was first filed. This is renewable every 10 years provided you are still using the trade mark.  (Note: trade marks are vulnerable to removal if they have been unused for a certain length of time).

Your trade mark will be registered Australia-wide and your rights also apply Australia-wide (unless particular limitations are placed on your trade mark). Registering your trade mark gives you a number of rights with regards to the goods/services it is registered in respect of, including the right to take infringement action against others.

For more information on all of the steps outlined above, we encourage you to download our comprehensive guide on how to register a trade mark in Australia. You are also welcome to contact MMW Trademarks for assistance.

It takes a minimum of 7.5 months from the date you file an application to secure full registration in Australia.

The cost to register varies. The biggest factor in determining the cost is the type of products and/or services your trademark is used to identify. All goods/service fall into ‘classes‘ and fees apply per class you require. See our fees page for more information.

There are a number of benefits to owning a registered trade mark, including:

  • Have the right to use and control the use of your ‘trade mark’ – without registration, you don’t necessarily have these rights (and- own it forever);
  • Stop others from using the same/confusingly similar name in your industry – without registration, stopping such activity can be difficult and costly;
  • Add value to your business – a trade mark is a sellable asset that adds values to your business in the event you wish to sell your business
  • Look credible. Registration of trade marks allows you to use them with the ® symbol, allowing your customers to see you as professional and dependable;
  • Generate further income for yourself, even after you retire!

Illustration

Each registered trademark you own is a valuable
asset, generating further income for you!

The registered owner has the right to use their trade mark in connection with goods/services that they nominate and generally control how the trade mark is used for those goods/services. This can include licensing use to others for a fee, and taking action against people found to be breaching your rights.If you are the owner of a registered trade mark, you have several main rights.

You have the right to use your trade mark in Australia in connection with the goods/services it is registered in respect of.

You have the right to authorise the use of your trade mark in Australia in connection with the goods/services it is registered in respect of (e.g. in a licensing situation, franchise situation etc).

You have the right to take infringement action against another person/s which uses your trade mark (or a deceptively similar trade mark) in Australia in connection with the same or related goods/services without your permission, and are found to be infringing upon your rights.

You have the right to claim that your trade mark is ‘registered’ and to use the trade mark with the ® symbol.  It is an offence for someone to claim or represent a trade mark as registered, or to use the ® symbol if the trademark is not registered

infringement action against other persons that use your trade mark (or a deceptively similar trade mark), in Australia in connection with the same or related goods/services without your permission, and are found to be infringing upon your rights. The right to claim your trade mark is ‘registered’, and use the trade mark with the ® symbol. A person cannot claim or represent a trade mark as registered, or use this symbol, if it’s not registered. In fact, it’s an offence to do so.

This is where we can help. Simply read over the Australian trade mark process and contact us when you are ready to proceed. We will take care of everything from ‘start to finish’ for you so that you don’t have to worry about it – you can spend your time focused on what you specialise in whilst we take care of what we specialise in!

In short, yes. By registering your trade mark you are granted the right to use that trade mark for the goods/services nominated. It may be possible for someone else to register the same trade mark, quite easily, for goods/services that are not deemed related – where it’s unlikely consumers would be confused between them. It is also possible for someone else to register the same, or similar, trade mark for the same goods/services after you do. This can be done if they show that they used and promoted that trade mark since before you sought trade mark registration and that use has been continuous (if they can do this, the examiner must remove your trade mark as a problem). It may also be done if they show their use to be honest and continuous with your trade mark registration. (This later option can be more difficult, as the evidence generally needs to be substantial). It’s also important to note that if someone has used the same, or very similar, trade mark since before you first used or registered (whichever is the earlier date) but not sought registration as a trade mark, they may have rights under common law that would allow them a defence against trade mark infringement, which in turn could see them allowed to continue use even if you have registered the trade mark.

The initial period of protection is for 10 years from the date the Application was first filed; you can renew this each 10 years if you desire and are still using your trade mark. It’s important to note that trade marks can be vulnerable to removal if they remain unused for a certain period of time.

Your trade mark will be registered Australia-wide. Your rights therefore also apply Australia-wide (unless particular limitations are placed on your trade mark, which usually would occur to resolve opposition matters and similar). If you intend to use and promote your trade mark outside of Australia, international registration should be considered in the relevant countries.

 In summary, there are many benefits to registering a trade mark.  As a trade mark owner, you will have a broad range of rights which serve to add value to your asset and protect it from possible infringement.  The cost of a trade mark registration depends on a number of factors, but it is not onerous and the initial period of protection is for 10 years from the date the application was first filed.

We have covered the main trade mark FAQ’s, but we know this is a complex area of law and if you have any further queries about trade marks and trade mark registration, we would be more than happy to help you.  Please just get in touch with the MMW Trademark Services offices on the phone, via email or through our website – we won’t charge a fee to answer your question!

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Real People, Real Reviews

Mark My Words Trademark Services Pty Ltd
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We've been clients of Mark My Words for quite a few years now, and not once have I ever doubted that my business is in the very best hands when it comes to handling our IP with trademarks in Australia and throughout the world. Jacqui has expertly guided us through a number of trademark purchases that were straightforward, as well quite a few other instances where we've had to overcome objections, negotiate trademark conflicts, and defending our own trademarks. The communication is perfect and the team always goes above and beyond to make sure we understand our options and possible costs before making any decisions. I highly recommend Mark My Words to any small business needing help with trademarks.
My company, Weyo, invested significant time and money in developing its brand identity so it only made sense to ensure Weyo was a protected trade mark. Mark My Words have been our first and only choice for assisting with our IP and trade mark needs across the world. This was particularly important as Weyo’s first launch was a collaboration with the Wiggles followed closely by collabs with Sesame Workshop and Oddbods so we needed to be sure everything was in place. Jacqui and her team deliver every time. 10 out of 10!!!
Jacqui has been a trusted external advisor to Funlab. Through our expansive and rapid domestic and international journey Jacqui has been a consistent and constant source of counsel. Her professional, proactive and wholesome approach to IP has been welcomed for many years. Thankyou.
Brooke and Jacqui were extremely helpful with a less than straight forward IP matter my company had to overcome. They were really great in keeping me informed of the process as it progressed and we achieved the best outcome.
Mark My Words were the perfect solution to my Trademark registration needs. They have been so professional and thoughtful along the journey, providing me regular updates and a streamlined service. I filled out a few details and they took over from there with no glitches and a wonderful result! I now have a trademarked writing business in Australia and I plan on protecting myself in other countries too. I wouldn’t go anywhere else. Thank you to the team for looking after HeartWriting® Workshops Australia!
Jaqui and staff at MMW have been excellent and very professional. I started with a large company who grossly overcharged and failed to do the necessary work. Still paying them off by the way! Then I found Jaqui and staff who went out of their way to assist for reasonable charges Go with a smaller company and get personalised service like I did. They go out of their way to offer advice at reasonable fees
Wonderful team, with great knowledge and experience in their work.They provide super quick, comprehensive responses to my questions and offer kind advice, regardless of the nature of the job. Such a great team with wise management.they are true professionals.
Our experience with Mark My Words has been excellent. We worked with Jacqui Pryor on US trademark infringement issues with no charge for the email consultation. Jacqui Pryor held my hand throughout the process and walked me through the steps necessary. I am very happy with the effort Jacqui Pryor made and the quality of the work. Her advice is always on point. She was always available and happy to answer any questions which is very helpful in the complex world of trademark infringement. Will continue to use Mark My Words for future IP activities. I would recommend Jacqui Pryor for anyone chasing deep trademark infringement issues.
Best of the best!I wanted to express my heartfelt appreciation to Jacqui L Pryor for her invaluable assistance with my challenging trademark case. Thanks to her expertise, I successfully secured my trademark. I highly recommend Jacqui for her exceptional thoroughness, intelligence, and skill in navigating complex legal matters. 5 stars ⭐️⭐️⭐️⭐️⭐️
Mark My Words have been excellent at getting our logo approved and communicated all the way through the process. Thanks so much. It turned out to be much easier than I had thought it would be due to you guys!
Mark My Words was a game-changer for my business. Being a business owner, it's always a challenge to find the right companies to work with. From the get-go, they grasped exactly what we needed and understood our challenges. Their efficiency and advice was spot-on, and I felt completely secure in their hands. Needless to say, I'm continuing to work with them.
I needed a bit of straightforward advice for my small business, as I wasn't sure if I needed to apply for a trade mark or whether there would be an infringement. Jacqui replied quickly, thoroughly and cleared everything up, with no charge for the email consultation. I'll definitely be back if I need more help in future.
Always friendly and helpful, MMW make the trademarking process really clear and easy.
Jacqui has been amazing in terms of advice and support when considering trademark issues in my business. I felt empowered to make informed decisions and reassured by her knowledge and professionalism. I wouldn't hesitate to engage her services again in the future. Very encouraging, quick to respond and highly professional. Many thanks Jacqui.
I have been using Mark My Words since 2011.They have taken care of my trade marks and any issues that have arisen over the years and there have been a few.Always very professional and reliable. highly recommend.
Very helpful in navigating all the requirements and answering any questions, making you feel comfortable and confident with the process. Would highly recommend!
Extremely professional service and advice, a very pleasant collaboration, which ultimately led me to successfully obtain approval in what I initially thought was an impossible trademark application process. Special thanks to Ms. Ma.
We tried to register our trademark ourselves and put it in the too hard basket after numerous rejections. We then got on to Jacqui Pryor at Mark My Words and couldn't have been happier with the ease of the process and Jacqui's clear communication style, keeping us informed and stepping us through the process to a successful registration. Couldn't recommend highly enough.
Highly recommended for their exceptional service - consistently professional from beginning to end.
The team at Mark My Words made a complex process extremely simple. Their communication was excellent throughout the process
The staff and Mark My Words Trademark Services were very helpful and always available to clarify any issues.
Great service. Highly recommended to anyone needing trademark legal services.
Jacqui and her team made the whole process so easy and efficient, especially being a busy business owner - it saved me so much time!
So good having Mark My Words handing our trademarking journey. Outstanding service at every stage of the process. Highly recommended!
Amazing service, highly recommended!
Mark My Words have processed the trademark application for my online business and social enterprise I'm Plastic Free. They are very accurate, precise, and very knowledgeable about trademarks. I'll definitely recommend them to any business that wants to protect its IPs.
I have just received my fully trademarked brand; thank you to Mark My Words Trademark Services for your seamless, informative and professional service. You have made a seemingly tough task very easy to deal with,
After months and months of dealings with a previous solicitor over trademarking, Jacqui literally got results in a matter of days.Jacqui walked me through the whole process via email, with very simple explanations and steps. I gained a world of legal knowledge from Jacqui.I would absolutely recommend Jacqui and her team, and will be using her again in the future!
Excellent service for a great price!
We've used MMW extensively across a broad range of trade mark applications in dozens of jurisdictions. The advice has been nothing but correct, actionable and timely. I couldn't encourage using MMWs services more. They are fantastic, reliable and a great addition to a busy in-house legal team.
Thank you for an all round great service,Most pleasant professionals We’ve come across
After weeks of self-directed research into IP and how to best protect myself, I only became more and more overwhelmed and unsure of where to start. After reaching out to Jacqui and the team at MMW, my queries were answered promptly and comprehensively. If it wasn't for MMW I would have wasted money on IP that wasn't registrable or helpful in protecting my brand. Thanks to their skill set and wide range of IP knowledge I could effectively protect my brand now, and for the future.
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