Trade Marks: Should you register?
Registering a trade mark is an important step for businesses who wish to protect and develop the reputation of their brand and products. A trade mark is a powerful tool to safeguard past and future investments in your business from parties who may attempt to use aspects of your brand and reputation for their own gain.
In Australia, trade marks are not registered automatically. Instead, businesses may apply to register a trade mark by lodging an application with the national regulator, IP Australia. The voluntary nature of trade mark registration makes it important for business owners to consider whether registering a trade mark is appropriate for their brand and products.
This article provides a useful guide to assist in determining whether to register a trade mark for your business.
What is a trade mark?
A trade mark is a form of intellectual property right which can be used to protect brand identity. A registered trade mark provides the owner with exclusive rights to use, sell, franchise or otherwise commercialise the trade mark, for the classes of goods and services that it is registered to.
The owner of a registered trade mark has rights to bring legal action against any party who infringes any of these rights in relation to the same goods and services. Infringement may occur where others deceptively use your trade mark, or a similar mark, to represent similar goods and services.
What can be registered as a trade mark?
A trade mark may be registered for the element of your brand or product that makes it recognisable to others, and creates reputation. Trade marks can be registered for any of the following:
- word/phrase
- logo
- shapes
- sounds
- colours
- moving images
- aspects of packaging, or
- a combination of the above.
However, the following cannot be registered:
- common words, phrases and images
- geographical names
- common surnames, even if they are your own surname
- prohibited signs, or
- restricted financial terms.
It is important to note that trade marks do not protect the intellectual property of the good or service itself. To protect the design and functionality of your product, a patent may be more appropriate. To protect the overall appearance of your product, registering a design right may be more appropriate.
Goods and Services
The rights that attach to a trade mark are limited to the classes of goods and services that the trade mark is registered to. There are 45 classes available for registration, with numerous subclasses. Therefore, it is important to consider how you intend to use your trade mark for both your current products, and future expansion of your business.
Application process
The application process generally takes a minimum of seven months to complete. Once an application is lodged with IP Australia, it undergoes a process of examination.
The trade mark examiner may reject your application if it is ‘substantially identical’ or ‘deceptively similar’ to an existing trade mark or earlier trade mark application for similar goods or closely related services. The applicant is granted an opportunity to respond and amend their application if it is rejected.
Once accepted, your application will be publicly advertised by IP Australia for a period of two months to allow for any third parties to file an opposition before it is formally registered.
Trade mark protection lasts for an initial period of 10 years, and may be renewed for a fee following that. Trade marks may be continually renewed indefinitely.
Benefits of registering your trade mark
There are various practical benefits to your business of being the owner of a registered trademark:
- Sale: trade marks may be sold or transferred. This may be an important component of the sale of a business or the sale of the rights to a product.
- Licence: additionally, the right to use a trade mark may be licenced to a third party. This may be important if the owner is looking to licence the sale or manufacturing of their goods and services.
Finally, the exclusive rights that attach to your trade mark may also act as a deterrent to others from using words and expressions that are identical or similar to your trade mark. Ultimately, trade marks can play a crucial role in protecting your brand reputation and your investment in your business.
Page Seager Lawyers can assist with preparing and filing your trade mark application and any other intellectual property enquiries that you may have.
