Trademarks

Trademarks

You should get a registered trademark to protect your brand and distinguish your products or services from others. We have extensive experience in the process of protecting your trademark and can advise you on:

  • conducting searches to ascertain the availability of registering your trademark
  • registering your trademark and the appropriate use of your trademark for your business, including online, and in your advertising and promotion materials
  • filing trademarks overseas, whether directly or through the Madrid Protocol
  • trademark prosecution and opposition proceedings before the Australian Trade Marks Office
  • trademark renewals
  • trademark infringement and “cease and desist” letters notifying a person or business that they have infringed your trademark rights and instructing them to stop
  • trademark assignments and licence agreements
  • filing customs notices with Australian Customs, which gives details of your trademark and the goods covered by it
  • strategies for brand portfolio management, covering portfolios where brands have different names across categories or a single brand name across all categories
  • IP audits

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Why you should register a trademark

When you register a trademark, you get the exclusive right to use it throughout Australia to brand your goods or services. You can use the ® symbol with the trademark to show others that it’s a registered mark.

Your trademark will be registered on the publically accessible Australian ATMOSS trademarks database, and other businesses that try to register the same  trademark will be informed that you already have a registered trademark for your brand.

It’s important that you register a trademark as a brand name or logo, as this is how a business is identified in the market as the source of a product or service. A trademark protects your identity as the supplier of goods and services and makes you stand out from your competition. The legal protection you obtain from owning a registered trademark will deter others from trying to copy your brand or ride off your success.

A trademark can give you protection for a logo, brand name, phrase, letter, picture, number, shape, sound, scent, aspect of packaging or a combination of those elements. It also gives you an IP right that can be bought, sold or licensed. A trademark can be an effective marketing tool through which you can build a brand identity and brand loyalty by using your trademark in your advertising and promotion campaigns.

It’s good practice to protect your brand and file for your trademark as soon as possible, otherwise a competitor may beat you to it, and file for the same or similar mark. Just as importantly, by filing for a trademark, you’ll know if it’s available to you, before your spend too much time and money on a brand name. A clearance check is necessary to ensure you’re not applying for a trademark that is already taken or infringing the trademark rights of others.

A registered trademark is a valuable asset that can increase in goodwill and value as your business grows and becomes successful in the market. Registered trademarks are property rights which may be purchased, sold and licensed. Trademark rights can last indefinitely and are renewable every ten years.

We can advise you on the suitability of your trademark and the possibility that it may be refused by the trademarks office for being descriptive, or for being the same as, or similar to, another trademark that covers the same or closely related goods or services.

Only a trademark can give you ownership protection

Only a registered trademark protects your word, logo, design, image or other combination from being replicated in the marketplace. Registration of a business, company or domain name does not in itself give you any proprietary rights. A registered trademark gives you the exclusive legal right to use, license or sell the mark within the country it’s registered in. Your trademark is a valuable business asset. Protect your brand by owning your trademark through registration.

Your brand may be protected by both common law and registered rights. A registered trademark will give you the strongest form of protection as it prevents competitors from using the same or similar trademark in relation to your goods or services. A brand owner may also be able to rely on the common law action of “passing off” but it does not protect the trademark itself, but rather the goodwill and reputation built up by the use of the trademark.

Use the ™ symbol prior to registration next to your trademark and the ® symbol when it is registered to put others on notice of your rights.

Enforcement

A registered trademark under the Trade Marks Act gives you the exclusive right to use the trademark in Australia. You can start legal proceedings for infringement if a person uses the same or a deceptively similar mark on goods or services that are the same or similar to yours. If you find out that someone is using your trademark in connection with similar goods or services, take action.

You may need to instruct a lawyer to issue a ‘cease and desist’ letter and, if a competitor’s use of your brand has harmed your business, bring a claim for damages or loss of profits. You should seek legal advice before taking action against an infringer, as threats of legal proceedings are actionable in Australia under the Trade Marks Act.

An unregistered trademark is harder to enforce as instead of relying on the Trade Marks Act you must rely on proceedings under the Australian Consumer Law or the common law action of passing off, which is difficult to prove and can involve costly and time-consuming litigation proceedings.

Importantly, owning a registered trademark also protects you if someone initiates legal proceedings against you, claiming that you’re infringing their trademark.

Use your trade mark otherwise you may lose it

Any person can file an application to remove your trademark for non-use. This application can be made if you have not used your trademark for a period of three years, or if you have not used your trademark and you had no intention to use the trademark when you filed an application for it. The person applying for removal is often a competitor whose application is being hindered by your registered trademark or is using removal proceedings as a means to obtain a letter of consent to remove a citation against their trademark application. The burden will be on you to oppose the removal action and provide evidence of use of your trademark, otherwise your trademark will be removed.

How long does it take for a trade mark to be registered?

The earliest date that you can obtain trademark registration is 7 1/2 months from the date of filing your application. This is because Australia has obligations under international IP treaties to allow 6 months for trademark applicants overseas to obtain priority in Australia based on an overseas trademark application.

The registration process can, however, take much longer or be refused on the basis of adverse reports issued by IP Australia or by another party filing opposition proceedings against your trademark.

International trademark registrations

If you want trademark protection overseas, you must apply for it in each country. You can file a trademark application in each country directly using a local agent, or you can file a single international application for multiple countries under the Madrid System.

We can advise you on filing a trademark overseas, and we have a well established network of agents overseas to assist in this process.

The Madrid System is a cost effective one-stop-solution for registering a trademark overseas. It allows you to file one application in one language and pay one set of fees to protect your mark in the nominated Madrid Protocol member countries. Over 90 countries have signed the Madrid Protocol, including Australia, the United Kingdom, the United States of America, the European Union, Japan and New Zealand. A Madrid Protocol application must be based on an Australian trademark application or registration owned by the same applicant. (So you must already have applied for, or been awarded, a trademark in Australia before filing a Madrid System application.)

A drawback of the Madrid System is that the international registration is dependent on the basic trademark for a period of five years. This means that if the basic trademark is cancelled anytime during the first five years after the international registration is issued, then the foreign application and registration that are dependent on the basic trademark will be automatically cancelled as well. An international registration lasts for a period of ten years from the date of registration and is renewable.

A full listing of Madrid Protocol member countries is available on the WIPO website.

Australian Customs – Notice of Objection Scheme (objecting to importation of counterfeit goods)

A Notice of Objection can be lodged with Australian Customs, giving them details of your trademark and the goods it covers. It’s a cost-effective way to protect your brand.

Customs officers will seize any goods bearing the trademark covered by the notification, and you’ll have ten days to take action against the importer. If the importer gives a response, the goods will be released to the importer unless you have initiated legal proceedings within ten days. If no response is received from the importer, the goods will be deemed forfeited and disposed of.

You will need to provide a Deed of Undertaking to Customs that you will pay any costs incurred by them while enforcing the Notice of Objection. These costs generally relate to the storage, transportation and destruction of the goods.