Need a Trade Mark? 6 Things You Need to Know

As a business, one of the most important markers of your success is your brand. Branding is how you distinguish yourself from others, be it your business name, a slogan or your logo.

If you want to prevent others from using your brand, you should think about registering a trade mark.

Here are 5 things you need to know about registering a trade mark in Australia:

 1. What Is A Trade Mark?

A trade mark is something that distinguishes your products and services from those of others. It is a valuable asset which represents your business’ brand.

Most commonly, businesses will trade mark the name of the business, a logo, or a slogan, but a trade mark can take many other forms such as a shape, colour, sound or scent.

In short, anything that makes a brand recognisable to consumers is a potential trade mark.

2. Benefits Of A Trade Mark

A trade mark can help build a memorable experience with customers, and lead to brand loyalty and repeat business.

Registering a trade mark also gives you exclusive rights to use that trade mark as your brand in Australia, and you have a legal avenue to prevent others from trading with it for similar goods and services. You can benefit from:

• Exclusivity: Exclusive right to use the trade mark across all Australian states, for an initial period of 10 years with the ability to renew indefinitely.
• Protection: Having a legal avenue to stop others from using your trade mark on similar goods and services.
• Licensing: The ability to authorise others to use your trade mark. This is a powerful tool for when you create agreements with producers, distributors, sellers or contractors.
• Business value: A trade mark can be bought, sold or transferred and can increase the value of your business.

3. To Protect A Trade Mark, You Need To Register It.

A common misconception is that registering your business name with ASIC prevents others from using that name. Unfortunately, while it’s necessary to register your business name if you’re trading under it, registration not make you the exclusive owner of this name. 

Instead, if you want the legal right to stop others from imitating your brand, you need to register it as a trade mark.

In Australia, trade mark registration is administered by a government body called IP Australia.

4. Not Everything Can Be Trade Marked

If your trade mark merely describes your product or service that is commonly used, IP Australia won’t let you register it. Also, if an application is too similar to a trade mark that is already registered by someone else, you may not be able to register the trade mark.

To be accepted for registration, a trade mark must be sufficiently distinguishable. You can avoid headaches down the road by doing proper research before applying.

Check the trade marks register and other government databases (such as the Australian Business Register) to see if others have registered anything similar to your trade mark. You should also do some investigating on Google to supplement your research.

5. The application process

Before applying for a trade mark, one of the most important things to think about is the way you describe your trade mark in the application. A trade mark’s description needs to be carefully drafted because it will determine the scope of your registration.

It’s important to do some research or get insights into whether your trade mark available or whether it may infringe on an existing trade mark. The best place to start is IP Australia’s free checking tool. The tool will give you an indication if there are already trade marks that might be similar to your proposed brand or name.

Once you’ve done all the groundwork, the next step is to simply lodge the application with IP Australia and pay the application fee. Your application will be examined by IP Australia and then be advertised to give others an opportunity to oppose registration.

Overall, the process will take at least 7-8 months from application to registration.

6. Cost Of Registration

The IP Australia fees are set out on their website. 

If your trade mark is an important aspect of your business, it might also be worth engaging a trade mark lawyer. This means that you’ll need to incur further legal fees, but you’ll get your money’s worth if it means having a better understanding of your risks and minimising issues down the track.

The last thing you want is to invest all your time and money into a brand strategy, and find out that there are legal issues you didn’t know about.

Conclusion

If you want to nail your brand strategy, there are many issues you’ll need to navigate. Do some research as you’ll get a better understanding of what you’re trying to protect.

Consulting a trade mark lawyer might be useful, especially if you want to make sure that your trade mark protects you in the way you want it to.

If you’re looking to engage a trade mark lawyer, we have a number of fixed-fee packages depending on what you’re after. Get in touch if you want to find out more!

Tomoyuki Hachigo

Tomo is the co-founder of Sprintlaw and a commercial lawyer with a broad range of legal experience. Before starting Sprintlaw, he was an M&A lawyer at a top-tier law firm advising businesses of all sizes from large corporates to startups.