Imagine, if you will, that you’re preparing to start a business.
The costs are adding up so you decide that it is not worth spending money on a trade mark to protect your brand.
Well, friend, we are here to tell you that you NEED a trade mark.
Why? Because if a copycat steals things that you’ve trade marked like your business name or logo, you’ll have the right to take legal action.
In this blog, we set out six things to know before you jump headfirst into the registration of your trade mark.
1. Trade Mark searching
Before you apply for a trade mark, it's important to make sure that the business name or logo you want to use is not already being used by someone else.
You can do this by undertaking a simple search of IP Australia's database of registered trademarks here.
If the name already appears on the register you will need to dig a little deeper to see if it is in a similar class of goods or services for which you were going to offer with the same trade mark (See step two for more information on trade mark classes).
If there isn't anything on the register, hold off on the celebratory drinks for a minute as this may mean that the exact word, phrase or logo is not capable of being registered (for example common words used within an industry such as ‘The Beauty Shop’ cannot be registered as other traders will need to use them).
2. Trade Mark Classes
Trade marks are categorised into 45 different classes. Classes 1 to 34 are for goods and 35 to 45 are for services. You can learn more about the relevant classes here.
You will need to choose the class or classes that best describes the goods or services that your brand will be offering because:
you cannot exclusively use your trade mark for any goods and services that you do not name in your application.
failure to do so may mean that you have a registered trade mark that does not sufficiently protect your brand from copycats.
- IP Australia may reject your application. If they do this, you could have to pay another registration fee to submit a new one.
3.Information you will need for the trade mark application
To submit your application, you’ll need:
- To know exactly what you are trade marking (an image, words, taglines, colours, shapes, artworks, sounds, scents etc) each individual trade mark will be its own application.
- A high quality representation of your trade mark (if it is a logo colour, shape or sound).
- information of the proposed trade mark owner (this can be a natural person or company) and the relevant postal address for notices.
- the appropriate class(es) that your trade mark falls under.
- payment details for the application fees – IP Australia charges a fee per class per application.
4. The time frame for an application
After you file your application, it will be reviewed by a trade mark examiner.
The examiner will check to see that your trade mark meets all of the necessary requirements and that it doesn't infringe (i.e. is not identical or similar to) on any existing trade marks.
If the examiner approves your application, your trade mark will be registered!
This process can take up to 9 months in total (where it is successful), but your registration will be backdated to your acceptance date.
If the examiner does not approve your application, you will be issued with an Adverse Report, outlining the issues with your application.
There are many ways to respond to an Adverse Report, but this can add significant delays to your application.
5. Use it or lose it
Once your trade mark is registered, it's important to monitor Google, the Australian Securities and Investments Commission and Australian Trade Mark Online Search System to make sure that no one else is using it without your permission.
Make sure to use your trade mark as it was intended to avoid someone else applying to have it removed from the register for non use!
Your trade mark will need to be renewed every 10 years to keep it active. You can do this by clicking here.
6. Consult a professional
Applying for a trade mark can be tricky and time-consuming. The last thing you want is to file your application, pay the fee and receive a rejection.
So, it may be worth booking in with a lawyer that specialises in trade marks so they can give you some helpful guidance on trade mark applications. We are here to talk if you have any questions.
Depending on how much time you have available, we are also able to help you prepare and file your trade mark application too.
Do you need more information about making your mark (see what we did there?). Get in touch with us for a chat!
***Disclaimer. Please read!!***
This article is for general information purposes only and should be used solely as general guidance. It does not and is not intended to represent legal advice or other professional advice.
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