Trade Mark Registration in Australia
Trade marks in Australia are governed by the Trade Marks Act 1995 (Cth).
To register a trademark, it must be unique and not similar to another company’s mark. A trademark lasts for ten years from the date of filing. You can renew your trademark every ten years.
If you don’t use your trademark in the first five years after registration, someone may apply to remove your trademark from the register. If this happens, you will be notified of the application and given the opportunity to defend. Following this initial five-year period, the time frame changes to 3 years of non-use before a person can apply to have it removed from the register.
A trademark helps to distinguish your business from others by making it identifiable. Many people primarily associate trademarks with logos. While this is true, there can be various other trademarks such as words, sounds, actions, scents, shapes, certifications and even wine.
Sound Trade Mark: Intel’s chime.
Action Trade Mark: The Toyota “Oh What a Feeling” jump
Shape Trade Mark: Coca Cola drink bottle shape.
Your Logo, Company Name & Slogan
You can break logo trademarks into two areas; the trademark for the symbol – think the Nike ‘Swoosh” symbol and the word or company name “Nike” as a trademark. You should also register your slogan, using Nike again as an example, “Just Do It”.
The first rule is that your trademark must be unique and distinguishable. Be aware that if you purchase your logo from an online graphics marketplace or where the logo can be purchased freely by others, it is likely that your trademark will not have proper protection, as it is freely available to others for purchase.
If the design is not unique, then your application for a trademark may be rejected. Or worse, you could be trading for a couple of years before a company comes out of the woodwork and challenges your right to that mark. If you lose a trademark right, you can also lose the goodwill you have built in the brand. You will also likely need to rename your business, purchase new domain names, new logos, letterheads and may be up for legal costs. You will also lose the benefit of the brand recognition that you have worked hard to establish.
In extreme cases, where a person or company uses another’s trade mark, the Court may order a percentage of profits be repaid to the trade mark owner, for the benefit the infringing party has gained from using the other party’s trade mark illegally.
Registering Your Logo Trade Mark
There are three ways you can register a logo as a trade mark:
1. You can register the mark, which is the icon or symbol part of your logo.
2. You can register the word in your logo – or your business name;
3. or you can register a ‘composite mark’ if your brand is stylised as a logo – like the logo of BOOST Juice, where the lettering style is the logo.
Once your logo is designed, a search of the IP Australia database for similar marks will need to be performed to confirm that it is not confusingly similar to an already-registered mark.
IP Australia is the authority of intellectual property in Australia. IP Australia make it possible to apply for registration of your trade mark yourself with their Trade Mark Assist tool that steps you through the process:
Despite this great tool, I still recommend getting advice on your trade mark because there are various classes; which are best described as categories. There are 35 trademark classes for goods and 11 classes for services. It is obviously important to register in your trademark in the correct class. For example, if you want to have a clothing brand named Livinit, you will want to register the trademark in class 25, which covers clothing, footwear, headwear.
Be aware that you can register in more than 1 class.
For example, aside from clothing, Livinit has a range of necklaces, then it will be a good idea to also register the Livinit trademark in class 14, which is reserved for jewellery and similar.
It will be worth talking to your lawyer about the products and/or services that you want to sell now, and your plans for the future before registering a trademark so it can be best protected. A lawyer should only charge you one or two hours for advice on your trade mark strategy. Before registering you must also do trade mark searches to ensure that it is not infringing on anyone else’s trade mark.
Before you authorise your designer to design your logo, I recommend you require the designer to warrant the logo mark they are designing is unique and is not purchased from a marketplace and resold to you. You can also have the designer indemnify you for a breach of this warranty. This means that if the design is not unique and you get sued for breach of someone’s trade mark rights, the designer must pay. You will need to pay more to get a unique design, but it is worth it.
You need to be careful when hiring a freelancer from overseas. Even if they agree to sign your agreement, it can be very difficult to enforce and usually not worth the money to try – especially if they are from a developing nation.
International Trade Mark Protection
You can register your trademark internationally through the World Intellectual Property Organization (WIPO), by using the Madrid Protocol, where you can choose trade mark registration in up to 70 member countries.
Interestingly, Australia is one of the few countries that allows electronic registration with WIPO. The application can be made through IP Australia who ensures the application complies with the Madrid Protocol before submitting to WIPO for their consideration.
Each country that uses the Madrid Protocol processes the applications in their own trademark offices. Each country, therefore, takes its own time to process. Once WIPO submits your trademark application, there is no obligation for each country to approve trademarks in their respective country.
What if you don’t have a Trademark?
The common trap is where companies fail to register trade marks for their products. Do you think Autodesk Inc. would want to register their product; Autocad as a trade mark? Of course. In fact they have. I recommend that you also register your products and services as trade marks because they are also intellectual property. It is all part of your brand.
If you have not registered your logo, product, or service, you will not be protected by the Trade Marks Act. However, your mark can be protected by Schedule 2 of the Competition and Consumer Act 2012 (Cth) – referred to as the Australian Consumer Law (ACL) – and also at common law.
The ACL has provisions preventing others from copying or mimicking your unregistered trademark, which is referred to as ‘misleading and deceptive conduct’.
The court can impose large penalties against companies that trick consumers into using their product or service by mimicking a competitor’s brand. Interestingly, the court doesn’t need to establish whether anyone was actually misled or deceived. Penalties can be imposed even a company’s conduct is ‘likely to mislead or deceive’.
Aside from the ACL, you can also rely on the common law to protect your trade mark if you have not registered it as a mark. At common law, this is known as ‘passing-off’. Passing-off, as the name suggests, means that one party tries to benefit from another party’s brand reputation.
Regardless of whether you rely on the ACL or the common law to protect your unregistered mark, you will be required to be trading under the trade mark and prove your unregistered mark has a reputation in the market.
Not having a registered trade mark is more difficult and expensive to enforce than a registered trade mark because there is added time and expense to collect evidence of your business’ use of that trade mark.
That is why it is best to register your trade mark as early as possible and get advice from a lawyer who is experienced in trade marks because you need to ensure that you need advice on whether the trade mark is available.
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Frequently Asked Questions
Where Do I Register a Trade Mark in Australia?
Trade Marks may be registered through IP Australia who have the power to manage trade marks pursuant to the Trade Marks Act 1995 (Cth).
How Much Does a Trade Mark Cost?
A trade mark costs $250 per class through IP Australia. If you decide to have a lawyer assist with registration advice, your lawyer's costs will be on top of IP Australia's registration fees.
What is a Trade Mark Class?
A trade mark class is a business classification of either goods or services. There are 45 trade mark classes ranging from manufacturing to printing, computer goods to textiles to air and marine craft. When registering your trade mark, you must nominate in the correct class or classes in which you require trade mark protection.
How Many Trade Mark Classes Can I Register My Brand in?
The number of classes you may register a trade mark in depends on how many of those classes your business legitimately operates in. For example, if you want to register a restaurant trade mark it may qualify in a number of food-related classes. However, it is unlikely to be properly protected in a printing class.