Trade Marks FAQs

What is a trade mark?

A Trade Mark is a sign used to distinguish a trader’s goods or services from the goods or services of other traders. The sign may be a word or words, a symbol or device, a label, a colour or colours, a shape, a sound, a smell, or any two of these elements used in combination e.g. the Coke word in fancy script and the shape of the glass bottle.

Why are Trade Marks important?

Trade marks and their associated goodwill may be the largest asset of a business, especially for those providing services. A good trade mark increases in value with time and can quantify the value of a business.

What is the difference between trade mark protection and copyright protection?

Trade mark registration provides the owner with legal rights to exclusive use, and / or control of the use of the trade mark throughout Australia for the goods or services for which it is registered. A trade mark has value as an asset so long as it used by the owner for the goods or services registered.

Copyright automatically gives you rights to the protection of your original works of art, literature, music, films, broadcasts and computer programs against copying and certain other uses. It protects the original expression of ideas, not the ideas themselves.

While making copies of copyright material can infringe exclusive rights, a certain amount of copying is allowed under the fair dealing provisions of the legislation. Copyright doesn’t protect you against independent creation of a similar work. Legal actions against infringement are complicated by the fact that a number of different copyrights may exist in some works. (Source: IP Australia)

What are the advantages of registering a trade mark?

Your trade mark registration is primary proof of your ownership of the trade mark which allows you to enforce rights against a third party if they adopt your trade mark or apply it to their goods or services.

Can a trade mark also be a trading name or business name?

Yes and vice versa. But only a registered trade mark can prevent unauthorised use by others.

Can a URL be trademarked?

You can register your domain name as a trade mark as long as it meets the requirements of the Trade Marks Act 1995.

Who owns a trade mark in Australia?

The first person to use the trade mark or, if there is no use, to apply for registration, is the owner and is entitled to seek registration.

Can two or more persons have the same trade mark?

Yes. Provided their respective uses are not likely to cause deception or confusion to consumers. For example ‘Pulsar’ is used by different owners on motor vehicles (Nissan) and watches (Seiko).

Can a trade mark owned by one trader prevent use and registration of a non-identical trade mark by another trader?

Yes. If the two trade marks would cause deception or confusion to consumers. For example trade marks which are not identical, but sound alike (e.g. Canon/Kannon) used on the same or similar goods (e.g. cameras/camera lenses).

How long can a trade mark be registered?

The initial term of registration is 10 years from the filing date. The registration can be renewed indefinitely for further periods of 10 years each.

Does an Australian trade mark registration only apply in Australia?

Yes (Australia includes Norfolk Island but not New Zealand). However an Australian application or registration may provide a basis for foreign trade mark protection.

What happens if a registered trade mark is not used?

If the registration is at least five years old and is not used for a continuous three-year period, it can be removed from the Register by others for non-use.

How should I identify my trade mark?

For a registered Trade Mark, the correct marking is ®. For an unregistered Trade Mark, you can use the marking TM. Your Attorney will provide clear instructions on the use of identifications for before and after the lodgement process.

Can I just start using ® and TM?

It is an offence of the Trade Marks Act 1995 to use the ® symbol for a trade mark that is not registered.

Thinking of re-branding?

If your business is ready to re-brand, remember these six key points regarding the protection of your trademark:

  1. Flexible fonts – Register the word/s of your trade mark in block capitals. This way you can change the font, without having to re-register the trade mark.
  2. Who owns it? – Trust, business or trading names cannot be listed as ‘owners’ of a trade mark. Corporation, individual, or trustee/s names are all acceptable.
  3. Location, location… – Think carefully about using your personal, business or company’s registered office address on your application, as it’s published online. PO Boxes are permitted, but a street address is preferable.
  4. Choosing categories – Let’s say you’re a winery and predominantly, you make wines. But what about the sale of that wine, your restaurant, or the branded products you sell? Always consider all the goods and services you provide, before choosing categories. Sometimes you do more than you think.
  5. Using your Trade Mark – Once registered, if your trade mark is not used for a continuous period of three years, it may be removed on the grounds of non-use.
  6. Keep it current – Trade marks are registered for a period of 10 years at a time, but can be renewed indefinitely, provided renewal fees are paid and you continue to use the mark.

Where should I start?

We recommend that you speak with one of our attorneys regarding your protection needs. We will advise the required steps and costs involved. Please Contact Us for more information.

If you would like more information about filing a Trade mark application or would like to book a free consultation with one of our patent attorneys, please contact us today.