A trademark allows you to have exclusive rights to use, license and sell the type of product you have created or are marketing for your business. It is, in essence, it protects your “identity” that allows consumers to recognise who you are. It is important in intellectual property law to have a valid trade mark to make it easier for you to take legal action to enforce your trade mark.
Trade marks are dealt with under the Trade Marks Act 1995 (Cth) (“the Act”).
Section 17 of the Act defines a trademark as:
“A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
Types of Trade marks
A trademark must be distinguished from a business name or company name. A business name or company name is registered through the Australian Securities and Investment Commission (“ASIC”).
A trademark can be one or a combination of the following:
It is important to understand that the following are NOT considered to be trade marks:
- URL’s – website domains are issued by private internet companies an only allow you to use the website name.
- Designs – a design is something that is considered to be “new” or “unique” to your business. A trade mark does not necessarily need to be. For example, the new visual features of a mobile phone would be considered a ‘design’.
Registering a Trademark in Australia
The process for an application to register a trade mark is dealt with under Part 4, Division 1 of the Act. In particular, section 27 outlines the requirements to apply:
- You must be the owner of the trade mark; and
- One of the following applies:
- You are using or intend to use the trade mark in relation to goods and/or services;
- You have authorised or intend to authorise another person to use the trade mark in relation to the goods and/or services; and/or
- You intend to assign the trade mark to a body corporate that is about to be constituted with a view to use by the body corporate of the trade mark in relation to the goods and/or services.
You are able to apply to register a trade mark online. As part of the application form, you must provide the following details:
- Name, ownership details and contact details;
- A representation of the trade mark;
- A description of the goods and/or services to which it will apply;
- A list of the relevant ‘classes’ of goods and/or services; and
- A translation of any part of the mark that is in another language.
You will be required to pay the application fee. This fee includes a filing date and a formal report within thirteen (13) weeks of submitting your application.
Once your trade mark is registered, section 20(1) of the Act allows the owner of the trade mark the exclusive rights to use the trade mark and authorise other persons to use the trade mark. The trade mark is registered for a period of 10 years, and can be renewed upon payment of the relevant fees.
Sections 17 and 27(b) of the Act require that you ‘use’ the trade mark. If you cannot provide evidence of that you are using, or intend to use the trade mark, you may not be able to register the trade mark.
Registering an International Trade Mark
In order to register an international trade mark, you need to satisfy the following criteria:
- You must have an application and/or registration within Australia;
- You must meet the eligibility requirements in Australia;
- The mark on the international application must be identical to the Australian mark;
- The goods and services in the international application must be covered by the claims in the Australian application; and
- You must be the applicant listed on the Australian mark.
Applications to register an international trade mark are dealt with under the Madrid Protocol, which is an international treaty that provides international registration of trade marks. International trade marks are administered through the World Intellectual Property Organisation.
Different fees also apply to register and maintain your international trademark. An international trade mark also lasts for a period of 10 years, and can be renewed upon payment of the relevant fees.
Grounds for rejecting an application
A Registrar will decide whether or not to accept your application. Sections 39 – 44 of the Act outline the grounds for rejecting your application:
- Your trade mark contains a certain sign that is already subject to a trade mark;
- Your trade mark cannot be represented graphically;
- Your trade mark is not capable of distinguishing your goods or services in respect of which the trade mark is sought to be registered from the goods or services of another person.
- Your trade mark contains or consists of scandalous matter or its use would be contrary to law;
- Your trade mark would be likely to deceive or cause confusion; and
- Your trade mark is “deceptively similar” to another trade mark.
Grounds for opposing an application
If a Registrar accepts an application to register a trade mark, then you or another person can oppose the registration by filing a ‘Notice of opposition’. The grounds upon which you can file a Notice of Opposition are contained in sections 57 – 62A of the Act:
- The same grounds as rejection of an application;
- The applicant is not the owner of the trade mark;
- The opponent has previously used a similar trade mark;
- The applicant does not intend to use the trade mark in Australia;
- The trade mark ins similar to another trade mark that has acquired a reputation in Australia;
- The trade mark contains or consists of a false geographical indication;
- The application was amended contrary to the Act, or the Registrar accepted the registration based on false information; and
- The application was made in bad faith.
The person who has then registered the trade mark must file a ‘Notice of intention to defend’.
How can we help?
At JB Solicitors, we are able to help you understand your rights and obligations when decided whether or not to register a trade mark. We also assist in opposing the registration of trade marks to defend your own intellectual property. Get in touch today to find out how we can help!