Trade Mark Attorneys | Sydney | Australia

What is a trade mark?

A trade mark generally is a way of identifying products or services in the marketplace as being associated with a particular trader or trade source.

A trade mark can also be a way of representing goods | services as being in compliance with as set of standards or rules or can have some other identifying functions in the market place.

A trade mark is a potentially valuable asset of a business and the value of the trade mark generally increases with the success of the business.

For example iPhone is widely known in the marketplace not just as as a smart phone but specifically a smartphone that Apple makes and sells.

Similarly both Coca Cola and Pepsi are widely known in the marketplace not just as a cola type soft drink but specifically a drink that comes from different manufacturers made to different formulas that make the drinks taste different from each other.

iPhone, Coca Cola and Pepsi are examples of well known and extremely commercially valuable trade marks that serve to identify specific goods being associated with a particular trade source however trade marks need not be well known to be a trade mark.

Even these well known trade marks at some stage were not well known or known at all, however were adopted as trade marks to distinguish the goods | services of the respective owners of the trade marks in the market place from similar goods | services coming from their respective market competitors.

Collapse info window! Collapse all info windows!

I have a business name, company name, and or domain registered so why do I need to register a trade mark?

Business name | Company name | Domain name | Trade Mark

A registered business name, company name or domain name is not the same thing as a registered trade mark however such a name can or does act as unregistered trade mark.

However that is not to say that all business names, company names and domain names are capable of being registered as a trade mark.

ASIC Registrations | Domain Name Registrar Registrations | Do not establish rights enforceable against 3rd party infringers

You are compelled by law for consumer protection purposes to register any business name or company name that you want to adopt and use in the market place with the Australian Securities and Investments Commission (ASIC).

However merely registering a business name or company name with ASIC does not provide you any legal rights that can be enforced against competitors that use a damaging conflicting name in the market place (infringing competitors).

You are compelled for operational reasons to register a domain name with a domain name registrar if you want to the domain name to point to your website.

However merely registering a domain name with a domain name registrar does not provide you any legal rights that can be enforced against competitors that use a damaging conflicting name in the market place.

How do I establish rights in a business name, company name, domain name that are enforceable against infringing competitors?

If you want to establish legal rights in a business name, company name or domain name or an other unregistered trade mark, that can be enforced against infringing competitors then the easiest way to establish those rights is to register, if registerable, the business name, company name, domain name, or other unregistered trade mark as a trade mark with the trade mark office.

While you are compelled by law to register a business name, company name with ASIC, or for operational reasons a domain name with a domain name registrar you are not compelled by law to register a trade mark with the trademarks office which will establish legal enforceable rights in the name | trade mark which a business sense would be prudent thing to do.

Unfortunately it is not an uncommon for new businesses to neglect to protect one of their most potentially valuable business assets ie their trade marks and this neglect not only refers to registering a trade mark but extends to not obtaining professional advice regarding selecting a business name, company name or domain name before they commit to the name in their new business, as these acts as unregistered trademarks and may be a problematic trade mark from the outset.

Collapse info window! Collapse all info windows!

What rights does a trade mark provide?

A registered trade mark provides you with enforceable exclusive legal rights to use, license and sell the mark, however the exclusive rights are subject to any 3rd party rights that existed before the trade mark was registered.

Collapse info window! Collapse all info windows!

What kinds of trade marks can be protected?

A registrable trade mark can be a corporate logo, a jingle in an advertisement, a business name or some other indicia that is capable of distinguishing goods | services associated with the trade mark in the market place from the goods | services of competitors.

Therefore a trade mark is not just ‘a logo’ and can be a range of indicia such as a letter, number, word, phrase, sound, smell, shape, logo, picture, movement, aspect of packaging, or a combination of these.

Not all trade marks are registerable, only those that meet the criteria set out in the trade mark law are registerable.

Collapse info window! Collapse all info windows!

How long does trade mark protection last?

A trade mark registration initially lasts for ten years from its filing date in the case of Australia, or 10 years from the deemed registration date in the case of New Zealand.

A trade mark registration can be renewed for further 10 year terms on the timely payment of renewal fees so subject to the relevant maintenance of a trade mark registration the protection can be indefinite in duration.

Collapse info window! Collapse all info windows!

Is a trade mark registration valid in every country?

A national trade mark registration only has legal effect on a national basis in the country in which it is registered.

If registered trade mark protection is required in multiple countries then corresponding national trade mark registrations will have to be sought in each country of interest.

However a trade mark owner may have pathway options for obtaining trade mark protection in multiple countries

For example via national application pathway for each relevant country, or via the international trade mark registration protection pathway under the Madrid protocol if that pathway applies to the countries of interest.

Collapse info window! Collapse all info windows!

How are trade marks rights enforced?

Registration of a trade mark establishes legal rights in a trade mark but it is the trade mark owner's responsibility to enforce those legal rights against 33rd parties that may infringe those rights.

The procedure of enforcing trade mark rights is no different from enforcing any other legal right that is being infringed or breached and a trade mark infringement dispute may resolved by negotiation or legal proceedings if necessary depending on what the circumstances necessitate.

Collapse info window! Collapse all info windows!

What is a trade mark license, and why license a trade mark?

A trade mark licence is a commercial contractual agreement between the owner of the trade mark and another party that wants to use the trade mark setting out the conditions of use, licence fee | royalty, term of licence and other important provisions regarding the agreement.

A licence can be exclusive, sole or non-exclusive in nature.

There may be a range of business | commercial reasons to licence a trade mark to another party or parties to use the trade mark in new or existing market places and a licence can provide control on where and how the trade mark is used.

Collapse info window! Collapse all info windows!

Why are trade marks useful to the community and economy?

For the community at large trademarks provide an easy way to make an informed purchasing choice based on previous purchasing experience or existing market knowledge. In that way trademarks act as a purchasing tool to the community at large.

For the economy at large the registered trade mark system is one tool that facilitates new and expanding business economic activity in the market place contributing to the health of the economy, as it can provide a business and easy way to protect its investment | commitment to growing the business, its reputation and or recognition in the marketplace while protecting that investment | commitment by its registered trade marks.

Collapse info window! Collapse all info windows!

What conditions must be met to obtain trade mark protection?

Not all trade marks are registrable. Some are not registrable due to the content or nature of the trade mark itself, and some are not registerable because of the existence of at least one prior conflicting trade mark on the register or is the subject of an earlier pending application.

The requirements a trade mark must meet in order to be registerable are set out in the trade mark laws but in simplistic terms it must be capable of distinguishing the goods | services for which it seeks registration (ie should be highly distinctive) and it must not be substantially identical or deceptively similar to an existing registered trade mark or one that is the subject of an earlier application for registration.

However it is important to note that not all 'good trademarks' from a marketing perspective are registerable, or may only become registerable with difficulty and expense.

Therefore ideally a 'good trade mark' is one that is not only good from a marketing perspective but also one that is highly distinctive, and not in conflict with exiting trade marks and should be registerable with ease and minimal expense.

It may be prudent to get professional advice before picking or committing to a new trade mark to help you pick a highly distinctive trade mark that is registerable with ease and minimal expense.

Filing requirements | Australia

If you require the filing requirements for an Australian trade mark application click here!

Filing requirements | New Zealand

If you require the filing requirements for a New Zealand trade mark application click here!

Collapse info window! Collapse all info windows!

How much does it cost to register a trade mark?

Registering a trade mark is a process and while each application follows the same process what happens during the process can vary significantly on a case by case basis which has an impact of actual costs.

If you are assessing costs for registering a trade mark, it is important to note that you fully examine the fine print and understand what the scope of the costs apply to as generally apparent low | fixed costs often do not include variables and may not make it self evident or clear that variables exist.

To register a trade mark in a single class that has an easy passage through examination (no examiners objections) and no 3^rd party opposition will cost about 2500AUD inclusive of GST and all official fees and providing you with an initial 10 year registration period.

Each additional class in the application at the same time will add about 1000AUD.

If prefiling consultations are required, or if adverse objections are raised during examination, or oppositions are filed by 3^rd parties then additional costs will be incurred to attend to these matters if required.

We can provide you a schedule of charges for trade marks on request and we can also provide you a prefiling consultation to not only discuss your requirements including selecting a suitable trade mark if required, but also help you formulate a potential scope of filing instructions with an accompanying costs agreement for your approval.

Collapse info window! Collapse all info windows!

We require the following details in order to file a national trade mark application.

Applicant's Details

1 | the full legal name and address of each person, company or other legal entity in whose name the application is to be made;

2 | the Australian company number (ACN), or the Australian registered body number (ARBN) if relevant for any company that is an applicant;

3 | in the case of an applicant that is a foreign legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.

Trade Mark Details

1 | a clear digital copy of the mark exactly as it is to be filed without any extraneous material that is not part of the trade mark;

2 | if the trade mark is not plain text but artwork then the trade mark is to be provided as a high resolution 'jpeg' image file with minimum size 277 by 227 pixels;

3 | if the trade mark is a plain word mark without any artwork then trade mark is to be provided as digital text exactly as it is to be filed |

4 | if the mark contains non English words and or foreign (non roman) characters, then an English translation of the foreign words or characters must be provided with the trade mark.

Goods and Services Details

1 | a description of the goods and/or services preferably provided in accordance with the international classification of goods and services;

2 | alternatively we can formulate a specification of goods and/or services based on your description for your approval properly classified as required.

Power of Attorney

An executed power of attorney is not required.

Need Help?

Collapse info window! Collapse all info windows!

We require the following details in order to file a convention trade mark application.

1 | the same filing requirements as a National Application as provided above

2 | plus the convention priority details: filing date, application number, and country where the foreign application was filed.

Filing Time Limits

The convention time limit to file an application and validly claim priority from an eligible first application is +6 months from the filing date of the first application.

Need Help?

Collapse info window! Collapse all info windows!

International | Madrid Trade Mark Application

The applicant must have an existing domestic application or registration ('the basic mark') in Australia on which to base the corresponding Madrid application and must meet the other eligibility requirements.

Basic Mark Details

The trade mark number for the Australian trademark application or registration upon which the Madrid application will be based.

Eligibility to File

in order to be eligible to file the applicant or each joint applicant must have at least one of the following connections with Australia:

1 | an Australian national;

2 | an Australian resident;

3 | own a real and effective industrial or commercial establishment in Australia, eg a person or organisation with a business premises in Australia.

When the application is filed by more than one applicant, each applicant must satisfy at least one of the above requirements.

Collapse info window! Collapse all info windows!

We require the following details in order to file a national trade mark application.

Applicant's Details

1 | the full legal name and address of each person, company or other legal entity in whose name the application is to be made;

2 | the New Zealand company number (NZCN), or the New Zealand registered body number (NZBN) if relevant for any company that is an applicant;

3 | in the case of an applicant that is a foreign legal entity we will require the name of the country and or the state under whose laws the legal entity was created by incorporation or other.

Trade Mark Details

1 | a clear digital copy of the mark exactly as it is to be filed without any extraneous material that is not part of the trade mark;

2 | if the trade mark is not plain text but artwork then the trade mark is to be provided as a high resolution 'jpeg' image file with minimum size 277 by 227 pixels;

3 | if the trade mark is a plain word mark without any artwork then trade mark is to be provided as digital text exactly as it is to be filed.

4 | if the mark contains non English words and or foreign (non roman) characters, then an English translation of the foreign words or characters must be provided with the trade mark.

Goods and Services Details

1 | a description of the goods and/or services preferably provided in accordance with the international classification of goods and services;

2 | alternatively we can formulate a specification of goods and/or services based on your description for your approval properly classified as required.

Power of Attorney

An executed power of attorney is not required.

Need Help?

Collapse info window! Collapse all info windows!

We require the following details in order to file a convention trade mark application.

1 | The same filing requirements as a National Application as provided above

2 | plus the convention priority details: filing date, application number, and country where the foreign application was filed.

Filing Time Limits

The convention time limit to file an application and validly claim priority from an eligible first application is +6 months from the filing date of the first application.

Need Help?

Collapse info window! Collapse all info windows!

International | Madrid Trade Mark Application

The applicant must have an existing domestic application or registration ('the basic mark') in New Zealand on which to base the corresponding Madrid application and must meet the other eligibility requirements.

Basic Mark Details

the trade mark number for the New Zealand trademark application or registration upon which the Madrid application will be based.

Eligibility to File

in order to be eligible to file the applicant or each joint applicant must have at least one of the following connections with New Zealand:

1 | an New Zealand national;

2 | an New Zealand resident;

own a real and effective industrial or commercial establishment in New Zealand, eg a person or organisation with a business premises in New Zealand.

When the application is filed by more than one applicant, each applicant must satisfy at least one of the above requirements.

Collapse info window! Collapse all info windows!