A trade mark is a sign used to distinguish your goods and services from those of other businesses. Trade marks can include words, slogans, logos, shapes and features of packaging. Registering a trade mark protects your brand. For many businesses, this may be your most valuable asset.
A registered trade mark gives you an exclusive right to sell and commercially exploit particular goods and/or services bearing the trade mark, and confusingly similar trade marks.
Obtaining a trade mark registration entitles you to display the ® symbol next to your mark. This puts people on notice about your trade mark rights and deters would-be infringers. It is an offence to display the ® symbol without having a corresponding registration.
Once registered, a trade mark can, potentially, stay registered forever provided that renewal fees that become due every ten years are paid.
Before filing a trade mark application, it is prudent to carry out searches to see if there are any existing trade mark filings that may affect your ability to obtain protection for your mark. Searches are also important to see if there are any existing trade marks (including unregistered trade marks) or pending applications that could stop you from using your proposed mark in the course of trade.
If the results of the searches are positive, an application is prepared and filed at the Trade Marks Office. The application must include the mark that you want to be registered and a description of the goods or services that you intend to use your trade mark for. One or more classes must also be selected corresponding to your chosen goods and services. Selecting the correct classes and accurately formulating the goods and services description is important and a difficult skill. Mistakes can lead to unnecessary objections during the examination process or cause you to obtain the wrong type of trade mark protection.
Once filed, your application is then examined by the Trade Marks Office to ensure that it meets all of the legislative requirements. It normally takes three to four months for examination to occur and for the Trade Marks Office to issue a report.
If the report is negative, it will explain the relevant issues and summarise any potential steps that you may be able to take to overcome them. Some issues may be minor. For example, there may be some technical issues with how the goods and services are described in your application. Some, however, may be more significant. For example, an existing registration may be cited against your application on the basis that it is confusingly similar.
If your application passes the examination stage successfully, third parties are then given a period of time to oppose the registration if they believe that grounds exist for doing so. After the opposition period has expired (or after any filed oppositions have been overcome) the application proceeds to registration and then becomes enforceable.
The Australian Trade Marks Office (IP Australia) has published the following video on YouTube which provides an informative case study about trade marks