Under the Trade Marks Act 1995 (Cth), a trade mark registration provides you, as the trade mark owner, with exclusive and automatic rights to your brand, Australia-wide.  Trade Mark registration is the most effective way to protect and defend your business' brands and marketplace reputation.

Trade mark registration is an essential part of any business’ short and long term branding strategy. The protection of a brand as a registered trade mark provides a strong legal mechanism to ensure protection of a business' name, its brands and its marketplace reputation.

Why is Trade Mark Registration Important?

A trade mark registration is a strong legal right. Once registered, your business has an automatic legal right to that registered brand throughout the country, irrespective of reputation. Without trade mark registration, the extent of your rights to your business name and brands will be limited to the extent of your demonstrated market-place reputation in those names, under other legal mechanisms.

Proving the extent of your reputation in court is a complex and expensive process and may not provide your business with adequate rights and protection. For example, if your reputation can only be demonstrated in one Australian state, it is unlikely you would then be able to prevent an unrelated trader using the same or similar name in another state.  Trade mark registration avoids these limitations and any need to solely rely on market-place reputation.

Trade mark registration offers the following benefits:

• Trade mark registration ensures that the time and money invested in developing the businesses brand and reputation is preserved. It prevents other traders, anywhere in Australia, from adopting an identical or even similar brand name in relation to similar business activities.  Unauthorised use of your brands, identical or similar, can damage your branding, dilute market share and destroy reputation.
• Having a trade mark registration also places your business in a stronger legal and strategic position for preventing unauthorised use of your brand.
• Having a registration, by itself, is often enough to deter further infringing activities, once the unauthorised party is placed on notice of your registered rights.  This can avoid the need to resort to costly court proceedings.  However, if court proceedings cannot be avoided, it is an important right to have as a cause of action.
• Having a portfolio of well managed registered trade mark rights from the outset will provide your business with a strong foundation to build its reputation and market share around those names now and in the future.

Australian Trade Mark Registration

A trade mark search is generally recommended as the first step of trade mark registration.  This will place you in a position to make an informed decision as to the proposed mark’s availability before devoting time and financial resources into the brand (and any associated marketing campaign).

A trade mark application can then be made with IP Australia. Our attorneys gain an in depth understanding of the current and intended business activities to be carried out under the proposed trade mark name. With this understanding specifications of goods and services are drafted and form part of the trade mark application. Drafting an appropriate specification is a critical step in the trade mark protection process. It provides the boundaries of the scope of protection to the trade mark.

The trade mark application is then examined by IP Australia.  Examination is undertaken in accordance with the Trade Marks Act and Trade Marks Regulations. If any issues arise a report will be issued. It will then be our role to present submissions or amendments to overcome any issues raised on your behalf.  Expedited examination can be sought. Otherwise examination can occur anywhere within the range of 3 to 6 months after filing the application.

If no issues are raised by IP Australia, the trade mark application then proceeds to acceptance. An accepted application is published in the Official Journal of Trade Marks, at which point it is open to a 3 month opposition period, during which any party has an opportunity to oppose its acceptance.  

Following this opposition period, the trade mark will then be officially registered once the required government registration fees are paid. The overall process from filing to registration generally takes 7 to 9 months. A trade mark registration can be indefinitely maintained requiring 10 year renewal fees.

Registering an international trade mark

There are a number of options and strategies when considering seeking protection overseas. There is no “worldwide trade mark” as such but there are mechanisms in place which make the process of seeking registration in other countries of interest achievable.

The Madrid Protocol provides a means of seeking trade mark registration in multiple countries by way of a single application. It provides a simpler and less expensive means of initiating applications in multiple countries. It also allows for the renewal of registrations in multiple countries in a single step. There are presently 71 member states to the Madrid Protocol, including the USA and China.

The European Community Trade Mark System is another means of seeking registration in multiple European countries initiated by a single application. Alternatively, trade mark applications can be filed directly into each country of interest, which in each case requires the appointing of a local associate to handle the application directly.  The Madrid Protocol and Community Trade Mark System avoid this initial administrative appointment cost.

Place an Online Enquiry to contact a Trade Mark Attorney or call us on 1300 768 730.