Legal Masterclass Series: Trade Marks 101
Here’s everything you need to know, less the legalese.
Ah, trade marks. To the non-legal folk out there, it can be a real headache to navigate this aspect of setting up and/or protecting your business.
So we’ve gone ahead and simplified it in as little words as possible.
Whether you’re on day 1 or year 7 of your business journey, this guide will explain all you need to know about trade marks.
Thank us later.
What is a trade mark?
Think of a trade mark like a badge of creative ownership.
It’s a recognisable symbol (think: logos, slogans, shapes, colours, and even sounds!) that signals to the world: “Hey, this is mine!” It sets you apart from others operating in the same or similar industries.
It’s a form of intellectual property (IP), which is an intangible asset.
What are the different types of trade mark rights?
Did you know you can trade mark a smell? Mind. Blown.
Here are all the things you can trade mark (source).
In reality, most businesses and start-ups will focus on the “Word or phrase” and “Logo” trade mark types.
What are the benefits of registering a trade mark?
There are heaps of benefits to registering a trade mark, namely:
It protects your IP in Australia,
It creates an asset which you can license or sell for $$$,
It distinguishes your goods and/or services from others,
Registering a trade mark has an upfront cost, but reduces the cost of enforcing your legal rights later down the line, and
It speeds up international registration if and when you go global.
Can I register my trade mark?
In order to register a trade mark it must be distinctive and not confusingly similar to an existing mark. It is more difficult to register common words, compared to invented words (e.g. Apple vs. Adidas).
Prohibited trade marks
Here’s some quick guidance on what you can’t trade mark (hopefully a lot of this is common sense).
Hands off official stuff: Olympic rings, government emblems, even words like “registered” are a no-go.
Keep it kind: Offensive, hateful trademarks? No bueno.
No tricks: Your trade mark must not be likely to mislead or deceive (e.g. registering a trade mark that includes a domain name you don’t own).
I haven’t registered my trade mark yet — what should I do in the meantime?
If you have a symbol with a word, phrase, logo or design that you believe identifies your goods or services (and that is not registered), you can employ the ™ symbol.
™ denotes an unregistered trade mark and signals to the market that you intend to claim exclusive rights to it and discourages others from using it.
Contrast this with ®, which denotes a registered trade mark.
The difference between ™ and ®
What’s the process to register my trade mark in Australia?
Step 1: The search
Much like a high-stakes criminal investigation, before taking action, it’s important to do a thorough search to ensure your trade mark is (1) available and (2) does not conflict with an existing trade mark.
A trade mark search can be done via IP Australia’s Trade Mark Search tool.
To search, simply type in the numbers, letters, words or phrases associated with the mark you wish to register. Try different combinations and filters to ensure your search is thorough.
What happens if there’s a conflict?
If you find a conflict, don’t stress. There are a few ways to get around this. For example:
The conflicting mark’s registration has expired,
The conflicting mark is registered for goods or services unrelated to your own business,
The conflicting mark has not been used for a long time,
You already use and promote your trade mark in Australia, or
You obtain consent from the trade mark owner to register your mark.
The list goes on (hint: you need a good lawyer to overcome some of these challenges).
Step 2: Pick your goods and/or services class(es) and sub-classes
There are 45 trade mark classes each with hundreds of sub-classes.
A little bit overwhelming, I get it.
Not to scare you, but this is something you need to get right the first time. Otherwise you risk:
Ending up with a trade mark that doesn’t properly protect you, and/or
Having your application denied.
Oh and to top it all off, you’ll have to restart the process and pay the filing fee again (no concessions here!)
Ok, now that I’ve scared you sufficiently, let’s get into it.
In summary:
Classes 1–34 covers goods
Classes 35–45 covers services
The easiest way to determine which class/sub-class your goods and/or services fall into is to use IP Australia’s pick list.
Try variations of words that describe your business to find the best match.
Tips for picking classes and sub-classes
1. Determine whether you need to protect goods or services, or both
For example, a hairdresser who sells their own branded hair products would need to protect both goods (i.e. their hair products) and services (i.e. their hairdressing service).
2. Be flexible
It’s important to select goods or services that aren’t too specific.
This gives you room to expand your product or service offerings down the line without having to submit a new trade mark application (costing you more $$$).
For example, if you produce and sell dog treats, instead of picking a class which only relates to pet food, you might want to also include an additional class that includes ‘pet products’.
3. But don’t be too flexible
Once you’ve found the overarching class you fall into, it’s important to specify the correct sub-class(es). Classes can be very broad and it might be tempting to select everything, however this may cause issues down the line (it’s more likely that your mark will conflict with an existing mark on the register).
4. Don’t worry about internal business tasks
You don’t need to pick classes to cover internal business functions.
An example of this is a personal training business. An internal business function could include marketing and accounting. You don’t need to cover these types of services in your trade mark application.
And don’t worry about promotional items.
It’s common to create flyers, pens, t-shirts, etc. with your branding on it, but this is not your core business, so you don’t, for example, need to select pens in Class 16.
What if the sub-classes don’t properly describe my business?
If you feel like the pick list sub-classes doesn’t do your business justice, you can write your goods or services in your own words. This works best for businesses that have a new or unusual product or service. And it may help avoid conflict with an already registered mark.
Step 3: Prepare and file your application
Trade mark registrations are handled by IP Australia (previously the Australian Patent Office), a government agency responsible for administering intellectual property law.
IP Australia portal
To start an application, you need to register an account on the IP Australia portal.
When should I file?
The faster you start your application the better. If you delay, there’s a chance someone will beat you to the punch, and it’ll cause you more headaches down the line.
Pre-application service (TM Headstart)
If it’s your first time filing for a trade mark, you can take advantage of IP Australia’s TM Headstart program.
You can only use TM Headstart for common trade mark types
words or phrases,
words or phrases in a specific font style, and
logos.
Under TM Headstart, an examiner from IP Australia will assess your trade mark before you make a formal application. It gives you an opportunity to amend your application, increasing your overall chance of success.
There is a downside.
The turnaround for the TM Headstart application is very quick. After receiving feedback, you only have 5 business days to formalise your application before it is permanently discontinued.
Step 4: Overcome any adverse findings (if any)
Unless you have a very unique trade mark (such as an invented word), there’s a reasonable chance that IP Australia will come back with an Adverse Examination Report (they are quite conservative).
It sounds scarier than it actually is.
An Adverse Examination Report is a document which outlines, at the first instance, conflicts between your mark and an existing mark (or marks) on the register. Typically the issues raised are:
Your mark is not distinctive enough (section 41 Trade Marks Act 1995), and/or
Your mark is too similar to an existing one (section 44 Trade Marks Act 1995).
Responding to an Adverse Examination Report
You have 15 months to respond to an Adverse Examination Report. You or your lawyer can draft a formal letter to IP Australia. Your letter needs to address the concerns raised. Based on the specific concerns raised, you must document relevant evidence to support your application.
IP Australia provides great advice on how to respond to these letters.
If the evidence is sufficient, your application will be successful.
My trade mark application is successful! What next?
Hurray! Your application has been marked as successful. You’re nearly there. Following this:
Your trade mark is published for two months on the Australian Official Journal of Trade Marks and the Australian Trade Mark Search
During this time anyone can oppose your trade mark
If there are no oppositions (or you overturn the oppositions successfully), your application will be finalised.
How long is my trade mark protected?
Trade mark registrations are valid for 10 years before they need to be renewed (this can be done indefinitely).
How do I maintain my trade mark?
To maintain your trade mark (or marks), you need to use it in the course of providing goods or services.
If you don’t use your trade mark, you risk a competitor or third party applying to IP Australia or the court to remove your trade mark from the register for non-use.
And there you have it! The A to Z of trade marks in Australia. We hope you found this article valuable. If you have any questions, feel free to reach out to the LUNA team.
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By Rahil Chadha
