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How to trade mark your brand in Australia

Trademark lawyers and trademark attorneys know best why a trademark is vital to any business and how a trademark can eventually become your most valuable business asset. The expert patent and trademark attorneys at Patentec will help you understand the indispensible importance and benefits of trademarking your brand in Australia.

Trade marking your brand in Australia

Trade marking your brand in Australia is vital to any business and your trade mark can eventually become your most valuable business asset. Let’s now look at the why and the how of trade marking your business name in Australia.

Why trade mark?

Firstly, why would you seek trade mark registration in the first place? Well, a trade mark registration essentially gives you two rights:

Trade Mark Rights

The first right you obtain from having your trade mark registered is freedom to use.

Once your trade mark is registered, you obtain a definite right to use the trade mark which means that no one can ever stop you using the trade mark down the track, such as by sending you a cease and desist letter or the like. It is vital that before you even consider starting a new business that you obtain this freedom to operate in advance (especially in that it is a process that we can have done and five working days). We have had Australian business owners come to us in the past who had been in the unfortunate position of having to rebrand their entire businesses several months or even years from launching because they didn’t secure their trade marks rights at the outset.

A trade mark gives you the right to use the trade mark – meaning no one can make you stop using the trade mark.

The second right you obtain from having your trade mark registered is the right to prevent others from using the same or deceptively similar trade mark. In this way, you can prevent your competitors from trading off your valuable reputation.

A trade mark can be used to stop your competitors from trading off your reputation.

Once your trade mark is registered, if you spot any competitors using a similar trade mark in the marketplace, let us know and we can take steps to make them stop, usually in sending them a cease and desist letter in the first instance. Also, there are many alternative remedies you can take advantage of, such as by having infringing domain name registrations handed over to you, Facebook pages pulled down, prevention of Google Adword bidding and the like.

Personal property

Furthermore, a trade mark registration as a personal property right, no different to owning a house or a car. In this manner, you can monetise your trade mark by selling your trade mark to others or licensing the use of your trade mark to others.

A trade mark is no different from a house or a car and can be monetised by being assigned (sold) or licensed (rented)

Domain names, business and company names give you no such right.

How to trade mark in Australia

I hope I have convinced you as to the advantages of having your trade mark registered. Now, let’s look at how to get your trade mark registered.

Choosing your trade mark

A trade mark is any sign that you use to distinguish your goods and services from other traders. In this manner, your trade mark can be the usual word or name trade mark, or a logo trade mark. Over and above this, a trade mark could even be a sound, scent, shape, motion and more.

Most trade marks however are word or logo trade mark. If your business has a word and a logo trade mark, these trade marks must be submitted separately as separate trade mark applications.

However, if you were to decide whether to file a word logo trade mark, the general rule is to pursue the word trade mark. The reason for this is that the word trade mark often times provides greater enforceable protection because it is not limited to any particular visual characteristic which could otherwise diminish the scope of protection.

When choosing a trade mark, make sure that your trade mark is not too descriptive. If it is, your trade mark could be refused during examination because the examiner would say that other traders would have a legitimate right to use your proposed descriptive words in the normal course of trade in describing their goods and services.
As such, when choosing trade mark, try and choose something distinctive. A good trade mark is suggestive, but not descriptive.

A good trade mark is suggestive, not descriptive.

Choosing your goods and services

When you file a trade mark application, you must nominate what the trade mark is currently being used for or what you intent to use the trade mark for, these being the nominated goods and services. The trade mark goods and services are divided into any of 45 classes according to a classification system called the Nice classification system.

The trade mark goods and services are divided into any of 45 classes according to a classification system called the Nice classification system.

When filing a trade mark application, you can select any number of classes. However, the more classes you select, the greater the registration costs.

The general rule is that you select the goods and services for which the trade mark is currently being used, and for those goods and services you intend to use the trade mark for within the next five years (five years is the period in which you must being using the trade mark, otherwise someone could ask for your trade mark to be de-registered for non-use).

Once your trade mark is registered, it will protect you for the exact nominated goods and services and also goods and services which are sold in the same trade channels. In other words, if your trade mark registration covers electric drills, it will also cover drill bits, safety goggles and the like because these are sold in the same trade channels (i.e. in Bunnings). However, if you don’t get the nominated goods and services exactly right it’s not a train smash, you can always file a fresh application down the track for any new goods and services, the slight disadvantage being in obtaining a later filing date for your trade mark application.

We can help you in the process of selecting the appropriate goods and services for your trade mark application.

Now, that have a look at the actual trade mark application process.