So, why are trademarks so important?
Well, put simply, trademark registration is one of the most effective ways to protect your brand in the market. Trademark registration creates an asset for your business which can be sold, licensed to others or used as a form of security. A registered trademark gives you exclusive rights to sell certain goods and services under that trademark and to license or otherwise deal with the trademark. Hence, you can control the use of your brand and stop others from using it. It also places the public on notice of your rights which can be an effective deterrent for would-be infringers.
But how do you go about registering a trademark? The process can seem confusing, so we’ve put together some of the most frequently asked questions to help you get started!
What is a trademark?
Technically, a trademark is a sign used in trade, that is applied to certain goods or used in relation to certain services and that distinguishes those goods or services from other traders. In essence, a trademark is the personality and identity of your business. So, if you want to establish an effective and unique brand for your product or service, make sure it is distinctive.
Once established a trademark can be a very valuable marketing tool as customers tend to identify the quality goods and services bearing that trademark. The Apple device is a good example of this. When customers see the Apple device on goods it immediately creates an impression about the nature and quality of those goods. For example, for me, it indicates that the product is of a good quality, easy to use and comes with an excellent warranty. Customers also have an emotional connection with Apple products as a result of the marketing strategies used by Apple to create its reputation and promotes its goods and services.
What can I trademark?
A trademark creates a legally enforceable right to the exclusive commercial use of any sign that is used to distinguish your goods and services from another trader’s goods and services. There is no exhaustive or prescribed list of trade marks available in the Trade Marks Act. However, generally the most common and easiest to register are letters, words, phrases, logos, pictures, shapes, packaging or any combination of these. Less common trademarks include sounds, scents, colours and movements.
Can I trademark a business name or domain name?
Yes, as long as the name is available, you are using it as a trademark and not merely as a trading or domain name. It must of course also meet all of the criteria for trademark registration.
What can’t I register as a trademark?
Some of the things that cannot be registered as a trademarks are:
- Brands that are highly descriptive or that include words or images that other traders would need to use to describe their goods and services.
- Brands that are generic and commonly used in trade. Such brands are therefore not distinctive of your goods and services.
- Geographic indicators such as ‘Melbourne’, ‘Queensland’ or ‘Australia’.
- Brands that are offensive.
- Olympic Games insignia such as the Olympic rings.
- Trademarks that are substantially identical or deceptively similar to trade marks that are already in use and/or that are already registered as trademarks.
How do I register a trademark?
Registering a trademark in Australia is made quite easy thanks to the online services systems offered by IP Australia. However, registering a trademark well is not so easy. You should ensure that your trademark meets all the criteria under the Trade Marks Act for registration and that in particular it is not descriptive or is already registered or in use by another trader, for the same or closely related goods and services.
You also need to think very strategically about what elements of your brand you want to protect and whether it is better to protect these elements separately rather than together, as a single trademark. For example, if you lodge an application for your logo and it incorporates both words and a device, then you may not be getting the level of protection for your brand that you otherwise would if you separated out these elements into two separate trademarks.
Lastly, you need to ensure that you choose (via the IP Australia ‘pick list’) or draft (via the customised goods and services option) your goods and services very carefully to ensure that you have adequate protection for all goods and services for which you intend to use the trademark. Too narrow and you won’t have sufficient protection. Too broad and in some circumstances it can actually work against you.
The process can be tricky, and although there is plenty of information and guidelines online, it is important to remember that you are creating an asset for your business that should become the most valuable asset and so it is worth investing in a professional trade mark lawyer or attorney who can ensure that your brand is appropriately protected.
How to perform a registered trademark search?
In Australia, before you apply to register your trademark, it is imperative that you conduct comprehensive searches for both registered and unregistered trademarks to ensure your brand can be used, registered and adequately protected. Searching the trademark database will disclose both registered trademarks and trademarks applied for.
Conducting trademark searches is a technical process and often those who don’t specialise in this area will miss important prior trademark rights that may stop you from using or registering your brand. It is also important to have a good legal knowledge of what constitutes a ‘substantially identical’ or ‘deceptively similar’ trademark. It’s a legal test and therefore requires a level of experience and knowledge not available to non-lawyers or even lawyers who don’t specialise in trade mark law.
Searching the trademarks register alone is not sufficient to ensure that you can register your trademark or that you are not infringing anyone else’s prior rights. There may be businesses out there that are using a similar brand and, because of their reputation, they can still stop you from using and registering the trademark.
Can I register a trademark online?
Yes, by using IP Australia’s eServices you can apply for your trade mark online. However, take care in lodging the application yourself. More often than not we see clients who’ve tried to register their trade marks in the past and either couldn’t get it registered or, if they did, it doesn’t have the scope of protection for their brand that they thought it did. If the trademark cannot be registered or you have not sufficiently covered yourself with all of the relevant goods and services, then you may not be properly protected and are essentially wasting your time and money. You may also still be at risk of infringing on someone else’s rights.
Ethikate® specialises in providing strategy brand protection services and we pride ourselves on drafting customised goods and services descriptions rather than taking the ‘easy road’ and using the IP Australia ‘pick list’. What does this mean for you? It means that you get the best protection possible for your brand and each of your trade mark registrations. It can also mean that you don’t need to apply for as many classes of goods and services because we don’t have to rely on the generic ‘pick list’ of predetermined goods and services. We can tailor your application so that it reflects what you actually do or intend to do under the trademark and we can incorporate more up to date descriptions that are not available via the ‘pick list’.
How to submit a trademark application?
There are many steps involved when registering a trademark with IP Australia:
- A search should first be conducted to see if there are any trademarks already being used by others that may affect your trade mark being registered;
- An application form needs to be correctly completed and submitted for examination;
- An examination report will be issued by IP Australia approximately 4-5 months after you lodge your application. This report will set out IP Australia’s examination results. If there are no issues, the application will be accepted and published. If there are issues you will have 15 months to correct them.
- If the application is accepted, it will be published in the Official Journal of Trade Marks and any person may oppose your application within a 2 month period, from the date your trademark acceptance is advertised. If an opposition is received, you will need to decide whether or not you wish to defend it and the process can become quite costly and lengthy. If your trade mark is opposed, you should definitely professional legal advice ASAP.
- If no one opposes your application during the 2 month opposition period, the application can be registered for a period of 10 years.
- Once your trademark is registered and all fees are paid, it will be enforceable and your trademark will provide you a defence against trademark infringement, in relation to the goods/services for which your trademark is registered.
- Initial registration is for 10 years. It must be renewed every 10 years for it to remain enforceable. As long as you are using your trademark consistently, it can be renewed indefinitely.
How do I trademark a phrase?
In order to obtain a trademark that protects a phrase, you will need to demonstrate that the phrase has a “secondary meaning” that makes your use of the phrase different from its usual meaning. You will also need to demonstrate that the secondary meaning is connected with your products or services.
The same trademark searches and applications will need to be made, but due to its subjective nature, it is recommended that you get advice from a trademark attorney or brand protection specialist before you get started.
Can I register an international trademark?
Yes and no. An single international trade mark application can be lodged designating the countries where you want trademark protection. This option is available under the Madrid Protocol and covers a broad range of countries (though not all). Alternatively, an application can be filed directly with each country through a suitably qualified lawyer or attorney in that country. International protection for a brand can be a tricky and costly exercise. We can provide you with pricing, access to our network of reliable international agents and a sensible and commercial international brand protection strategy.
Must a trademark be registered?
You do not have to register a trademark. There are other forms of protection that you may be able to rely on such as passing off or misleading or deceptive conduct under the Australian Consumer Laws. However, if you do not register your trademark, a competitor could apply to register your mark as a trademark and you would have to defend your rights if you wished to retain them, which can be expensive and time consuming. It could result in costly rebranding and losing your position in the market.
Do I have to use a registered trademark?
Once you register a trademark, it is important that you ensure you are using it correctly, as by law anyone can apply to have your trademark deregistered for non-use if you haven’t used it for as particular period of time. This system is in place to avert businesses from registering desirable and appealing trade marks just to stop others from using them or to otherwise create a monopoly over a particular brand.
Anyone can apply for the removal of a trade mark for non-use, but applications can also be opposed. Applying for opposition means that a temporary hold is put on the trade mark removal until satisfactory evidence in support of the opposition is provided.
How long do registered trademarks last?
Initial registration in Australia is for 10 years. Most countries have a similar period of registration. It must be renewed every 10 years to remain enforceable. The trademark can be renewed indefinitely.
How long does it take to register a trademark?
A trademark generally takes 8 to 12 months to register from the date the application is lodged. There are several reasons for why it arguably takes so long for a trademark to register but in essence it’s because of international conventions.
What does registering a trademark cost?
There are fees charged by IP Australia for applying for, registering and renewing a trademark. Extra fees apply if the application is objected to by IP Australia or if someone opposes. Fees vary greatly depending on numerous factors such as the type of application lodged, whether or not you use the IP Australia ‘pick-list’ or customise your goods and services descriptions, how many classes your goods or services relate to, and whether extensions of time are required.
The IP Australia application fees for a standard trademark application is $330 per class, per trademark which covers customised goods and services descriptions and registration. The IP Australia renewal fees are similar in cost and are payable every 10 years.
Can Ethikate® help me with trademark registration?
The trademark application and trademark registration process can be tricky and it is very easy to get it wrong. Your brand is your most important asset and so it is imperative that you the trade mark registration process right.
If all this seems a little daunting, don’t worry! Here at, Ethikate® we are brand protection specialists and can offer you legal advice and guidance on all aspects of your brand protection strategy. We work with IP Australia on a daily basis and trademark registration is what we do best.
If you are looking to start the trademark registration process, are worried that you may be infringing on someone else’s rights, or would like to develop a brand protection strategy for your business, we can help.