An Introduction to Trade Marks

A trade mark – sometimes called a brand – can be your most valuable marketing tool. It is a way to associate your product or service to your business. A trade mark can be an image, a word, a phrase, a picture, a logo incorporating words, or even sounds, shapes, or even smells.

A trade mark is intellectual property. While it is intangible, it carries value and it can be enforceable at law. It can be registered with IP Australia, the government body responsible for trade marks, patents, and designs.

Classes of Goods and Services

Trade marks are classified in goods and services.  This is in recognition that there are many different types of businesses, and that businesses shouldn’t be locked out from registering their trade mark just because a similar sounding name in a completely different industry was already registered. There are 45 classes available, goods being classes 1 to 34 and services being 35-45. A trade mark registration can cover more than one class under the same registration number.

Registration Process

Once your trade mark application has been filed with IP Australia, it will be examined by a Trade Mark Examiner within 3-4 months.  If no objections are raised to your trade mark, it will proceed to acceptance upon payment of a registration fee.  The registration will be advertised in the Official Journal of Trade Marks for a three month period of opposition by any person.  If the trade mark is not opposed, a Certificate of Registration will issue.  A Certificate of Registration will not be issued until approximately 7-8 months after the initial filing date.

If however, a Trade Mark Examiner objects to any aspect of your trade mark, that being the word, mark, logo or the goods/services applied for, an examination report will issue.  We will have 15 months to meet any requirements outlined by the Examiner and to have the trade mark accepted.  Once all issues are rectified with the Examiner, the trade mark will proceed to registration upon payment of the registration fee as mentioned above.

Length of Protection

The trade mark will be valid for a 10 year period from the date of filing.  The trade mark can be renewed indefinitely in periods of 10 years at a time.

Once you have had an opportunity to decide on what trade marks you would like to proceed with and the classes of interest, we will be able to provide you with an estimate of costs.

How we can help

We have extensive experience with trade mark registration and can help you:

  • Identify which classes of goods and services are relevant to your trade mark
  • Conduct searches and other inquiries to identify whether you would have difficulty in registering your trade mark
  • Making assessments and recommendations to maximise your prospects of registering your trade mark
  • Assisting you with the process and complete all relevant forms and documents to register your trade mark
  • Deal with IP Australia or with your competitors in the event that there is a rejection or objection to your trade mark registration.

 

This article was co-written by Cathryn Wilson and Kenneth Ti

Kenneth is a solicitor with Adams & Partners. He practices primarily in the commercial field, mostly around litigation and dispute resolution. He works a lot with small to medium sized businesses and is well-connected with the local businesses in Parramatta. Read more about Kenneth here.

About Kenneth Ti

Kenneth is a solicitor with Adams & Partners. He practices primarily in the commercial field, mostly around litigation and dispute resolution. He works a lot with small to medium sized businesses and is well-connected with the local businesses in Parramatta. Read more about Kenneth here.