Make Your Mark with a Trade Mark
HAVE YOU TRADEMARKED THE NAME OF YOUR BRAND?
A common myth in the business world is that company, business or domain names are the same thing as a registered trade mark – this is incorrect.
Registering your brand as a trade mark means that you will have the exclusive right to use, licence and sell the trade mark.
In Australia, it is possible to protect your brand without trademarking it, as we have a “first to use” system, rather than a “first to file” system (for example China). However, this can be a more complicated and lengthier process as you will need to commence proceedings to enforce your trade mark against a third party.
WHAT IS A TRADE MARK?
A trade mark is your business’s unique identity that distinguishes it from other products and services in the market. Types of trade marks include words, phrases, logos, pictures, numbers, or a combination of these.
HOW DO YOU REGISTER A TRADE MARK?
Australian trade marks are registered via IP Australia. There are 45 classes of goods and services, and within each class, there is a long list of items to choose from.
When identifying what class(es) are appropriate for your business, you need to ask yourself what is the nature of your business and what it is that you are known for by your clients? In other words, what is it that you get paid for? This does not include the things simply required to run your business, for example, stationary or your website.
It is essential to correctly identify the class(es) and the items within the class(es) at the beginning of the trade mark application process. This is because once you apply for a trade mark, you cannot change the classes or items within that class. It is also important to choose the correct items within a class because your trade mark only relates to those specific items.
WHAT YOU CANNOT TRADE MARK
The grounds for rejecting an application for a new trade mark are listed under sections 39-44 of Division 2 of Part 4 of the Trade Marks Act 1995 (available here). In summary, a trade mark application will be rejected if it:
Contains prohibited signs under the regulations;
Cannot be represented graphically;
Does not distinguish the goods or services to the goods and services of others;
Is scandalous or contrary to law;
Is likely to deceive or cause confusion; or
Is substantially identical with or deceptively similar to an existing trade mark.
TAKEAWAY MESSAGE
To avoid unnecessary costs and stress, you should register your trade mark as soon as possible. IP Australia lists the costs of the application process, which vary depending on the number of classes applicable to your trade mark.
WE’RE HERE TO HELP!
If you need any help with registering a trade mark, identifying the relevant classes, or if you would like assistance with establishing trade mark procedures for your business, please do not hesitate to contact us. Visit www.jenkinslegal.com.au
