Trade mark registration is the most effective way to protect your brand – including your company’s logos, slogans and product and services names. Registration provides you with the exclusive rights to that brand as well as providing your company protection from those who benefit from your company’s goodwill.
Many business owners believe that company or business name registration is sufficient to protect their rights. This is incorrect. Business name registration provides very little brand protection.
Let’s take a look at the steps to register a trade mark below.
Preparation for Trade Mark Registration
Preparation for trade mark registration is a critical step and requires the proper due diligence. The trade mark that you select is important. It should not be a generic description of the services, as such marks may be rejected by IP Australia. You will next need to perform a search of the trade marks register at IP Australia to see if that trade mark is already registered. If you find the same name, then you can check the class in which it was registered. You may be able to register your brand if there is the same brand registered in different class.
It is critical that you properly identify the class of goods or services for which you want to use the trade mark because once filed, the class cannot be changed. While you can do another application for the trade mark in another class separately, it is far from ideal to have two trade marks in two classes – as opposed to (the ideal) one trade mark in two classes, for example.
Next you can will need to search for your proposed brand in Google to ensure someone is not using that brand for its business or its products or services, without registering it. This is known as a common law trade mark. Businesses who trade using a brand without registering it, may still rely on brand protection at common law, due to their . While common law trade marks are harder to defend or enforce, as the case may be, common law trade marks can still be relied upon.
Aside from Google, you can also search for common law trade marks through domain name registrars such as NetRegistry and VentraIP. Searching for domain name availability is also a commercial consideration, as using the brand as a domain name is very significant, especially for tech companies, startups and other brands that require an online presence.
Provided that you have performed your trade mark due diligence in the above steps, the next step is to file the application with IP Australia. Once it has been filed, the application will appear on the IP Australia database within 1-2 days.
Once on the IP Australia database, it serves as notice to others in Australia that you intend to regsiter the trade mark. Essentially, this provides others the opportunity to oppose the application.
Following this, an examiner from the office will review the trade mark application to determine whether:
- there are other trade marks in your nominated class(es) that are the same or too similar; and
- your desired trade mark is too descriptive.
If the trade mark examiner has a problem with your application for any reason, the examiner will provide an examiner report, which describes the reasons why your filing was not accepted. In some circumstances, you have the opportunity to respond to the examination report which you will be requried to respond with legal arguments in reply to the trade mark examiner’s rejection of your trade mark application.
If your trade mark is approved by the examiner, your trade mark will be registered for a period of 10 years.