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Need a Trade Mark?

5 Things You Need to Know

 

Posted by Tomoyuki Hachigo on 13 September 2017

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. 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, the $35/year registration with ASIC, while necessary if you’re trading under that name, does not make you the exclusive owner of that 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.

3. 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.

4. The application process

When 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.

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.

5. Cost of registration

The IP Australia fees are set out on their website. For a standard filing, the ‘without picklist’ option for $330 per mark tends to be popular, as this allows more flexibility and specificity in determining the scope of your registration.

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!

Need help with a trade mark?

We can help! Just get in touch and we can walk you through your options.

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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.
Tomoyuki Hachigo

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