We’re gonna hit you with some legal awesomeness and fill you in on everything you need to know about how to register a trade mark in Australia, the benefits of registering and what the heck it all means
We’re going to start this article by dropping some major truth bombs 💣. Are you ready? First, registering a business or company name does not grant you exclusive ownership over said name. Second, owning a domain name is not the same as registering a business name and also does not grant you exclusive rights to the name used.
Registering a trade mark is the only way to guarantee you have exclusive rights to your brand name, logo and other business assets #realtalk. Ever wondered how to register a trade mark in Australia? In this blog, we talk about trade marking and why you should consider this process as a way to protect your business, products and services.
A trade mark is a legal way of owning and distinguishing the name, goods and services your business advertises and provides. A trade mark can be more than just a business name or logo. You can trade mark words, phrases, movements, sounds, images and smells. You best believe Chanel No 5 is trademarked. Hasbro has also trademarked the Play-Doh scent (sweet, slightly musky, vanilla-like with slight overtones of cherry and the natural smell of a salted, wheat-based dough).
Basically, any feature or combination of features that separate your business from the pack can be registered as a trade mark. You can even trade mark aspects of packaging if applicable!
There are two types of trade marks, registered trade marks and common law trade marks (unregistered):
- Registered trade marks are the bonafide trade marks that have been approved by IP Australia and feature a ® symbol.
- Unregistered trade marks are protected by common law and feature a TM symbol.
The difference between registered and unregistered trade marks
It boils down to this. If you have a registered trade mark and another business is infringing on your rights, you can take immediate legal action under the Trade marks Act 1995 .
If you have an unregistered trade mark you need to bring action under section 18 of Australian Consumer Law. In this situation you need to prove “passing off” (another business trying to masquerade as you). To do this you need to prove ownership of the trade mark in question and prove damage to reputation/goodwill and deceptive conduct on the part of the defendant. In short, it’s a lot harder to defend the honour of unregistered trade marks.
Still a tiny bit confused? Think of it this way, a registered trade mark is like being married and an unregistered trade mark is like being de facto. The married person has clearer rights and privileges than those in de facto relationships even though both situations are observed under common law. And look, we have no opinion on whether or not you get married but when it comes to trade marks we are in agreement with Beyonce, “if you like it then you better put a ring on it”. In other words, if you want to protect your business then you better register a trade mark 🎵.
The benefits of registering a trade mark
When you register a trade mark in Australia your asset is protected nationally and you have an automatic right of action if your precious asset is exploited by third parties without authorisation. When you have a registered trade mark the law is basically in your favour and automatically presumes the third party is seeking to confuse and deceive the public.
So let’s say you sell jeans that feature a unique zip that is trade marked. Let’s call this zip, “zip tight”. If another company begins to sell “zip tight” jeans then you can call them out and show your registered trade mark, requesting an immediate cease and desist. You can also sue for damages.
If you don’t have a registered trade mark, in this situation you’d need to prove you own the phrase “zip tight”, prove that it’s unique to your brand, prove that you’ve established a reputation around the phrase and more. All the while your copycat can keep selling “zip tight” jeans.
Overall, when you have a registered trade mark you have control over how it is used and presented in the marketplace. With a registered trade mark can better protect your brand identity because you’ll have the paperwork to back it up (it’s all about the #receipts).
How to register a trade mark in Australia
In Australia, trade marks are registered through IP Australia. The process is as follows:
- Search IP Australia’s trade mark register to ensure no one has trademarked your asset
- Understand the type of trade mark you are applying for and define which goods and services classes your trade mark will fall under. This can be complicated if in doubt contact the Foundd legal team for help!
- Apply for a trade mark. Trade marks can be owned by individuals or businesses.
- Wait to discover whether or not your application has been approved.
Once an application is submitted it is examined by IP Australia. This process can take 3-4 months after filing. If your application is accepted then you are sweet-as. Your trade mark will be entered into the Australian Official Journal of Trade marks and listed on IP Australia’s trade mark registry. Upon registration, your trade mark will be protected for 10 years.
If your application is rejected you’ll receive correspondence that outlines grounds for rejection. You will need to respond to this communication and in our experience, this can get a little stressful. If this happens to you know that the Foundd legal team is here to help and can assist in your response.
Grounds for rejection can be because your proposed trade mark is not distinctive enough or it’s is too similar or identical to another trade mark.
All in all, we highly recommend registering a trade mark for your business whether it be a brand name or logo, a signature scent or a special zip for jeans! Registering a trade mark will protect your business and is generally a good investment in yourself. Over time a brand’s identity can become invaluable. You want to protect it from day 1 so that when you make it to the big time you are bulletproof.
If you have any lingering questions about trade marks or are keen to register a trade mark and are unsure where to start, do not hesitate to contact the Foundd Legal team! We offer a initial consultation for all new clients.