Trademarks Lawyers | Greyson Legal
Greyson Legal have first hand experience and knowledge in regards to trade marks, including Australian and international trade mark registration processes, such as through the Madrid Protocol International Registration system administered by WIPO.
If you are looking for a trademark lawyer in Redcliffe or a Sunshine Coast trademark lawyer, contact Greyson Legal for details on how we can assist you.
What is a Trade Mark ?
In general terms, a trade mark is a way of identifying a particular good, service or business. When one talks about a “brand” this is typically a reference to a trade mark. Trade marks consist of:
- Words, phrases, symbols or designs
- Distinct shapes
- Aspects of packaging
or, a combination of the above.
For example, the words, colour and logo of Coca Cola are trade marked.
Trademarks help to identify and distinguish the goods or services provided by one person from those of another.
In Australia, trade marks are legislated through the Trade Marks Act 1995 (Cth). In order to properly protect your IP rights in say a brand it is best to register a trade mark. You do not have to register a trade mark to use it, but registration offers much greater protection. Unregistered trade marks are protected by the common law (such as the law of passing off). However, common law rights can be more difficult to prove and enforce.
Once registered, the owner has a legally enforceable and exclusive right to that trade mark. Such rights also enable the trade mark owner to licence its use. For example, a Franchisor may grant a licence toits Franchisees to use the Franchisor’s trademark in promotion of the franchised business.
Requirements for Registration
In order to be registered, the mark must also meet certain requirements as set out in the Trade Marks Act 1995 (Cth). For example:
- it must be distinctive;
- not substantially identical or deceptively similar to another mark;
- it must not contain certain restricted words or images.
Trade mark Searching
We conduct preliminary searches before filing any application for trade mark registration to ensure that marks you are intending to register are not already owned by others.
Without conducting appropriate searching there is a risk of infringing a third party’s intellectual property rights, which could result in an adverse legal outcome for you.
- a full trade mark searching and clearance service; and
- you with a report identifying any obstacles to proposed registration of your mark and guidance to minimise risks.
Advantages of Registering a Trademark
In general, the advantages of registration can include:
- the owner gains proprietary rights in the mark;
- preventing the registration by someone else of an identical or deceptively similar mark;
- enabling others to identify your mark in searches so they know in advance that your mark is registered and that you have exclusive rights to the mark;
- adding value to your business, especially where the brand generates goodwill;
- the ability to licence or franchise your rights in the mark in return for a fee;
- placing you in a stronger position to defend against any infringement against your mark.
Stages of Registration
Trademark registration proceeds along 4 stages:
Application must be made in the prescribed form. This will involve providing various information including the applicant’s name, address, goods/service description, class type, etc.
Applications are examined in order to determine whether the application is as prescribed and whether there are any grounds of rejection. If there is a problem on examination the Registrar may issue an Adverse Report. Usually the applicant is given an opportunity to amend the application for re-examination. The examination stage could last around 3-4 months.
- Advertisement stage
If an application is accepted, it will be advertised in the Australian Official Journal of Trade Marks.
There is an opposition period of 3 months commencing from the date advertisement whereby others can oppose the application. A ground for opposition could, for example, that the mark is likely to deceive or cause or confusion because of it is similar to another mark already in use.
- Registration stage
If there are no grounds for opposition the application can then be registered. From the time of application, it can take around 6 to 7 months for the mark to register, depending on issues in the examination stage or opposition.
Once registered, the trademark owner can use the ® symbol beside the trademark protected word or logo.
A trademark is usually registered for 10 years. After which the trademark can be re-registered for further periods of 10 years each.
Trade Mark Non-Use
Even though a trade mark owner may have registered a mark in Australia, registration on its own is not sufficient to ensure the mark remains the exclusive property of that owner.
When an application to register a mark in Australia is lodged there is a presumption at the time of application that the applicant will act in good faith with the intention that the mark (once registered) will be used in Australia by that applicant in relation to the class of goods/services associated with the mark.
If you are the registered owner of a mark in Australia and you either never intended to use the mark when you applied for it or you have not continuously used the mark for the prescribed period under the Act in relation to the goods/services associated with the mark, then you risk losing the right to the mark on the basis of non-use.
Business Names and Company Names
Registering a business name or company name is a regulatory requirement, but is not the same as registering a trade mark.
These names are registered through the Australian Securities and Investments Commission (ASIC).
Registration through ASIC on its own does not provide any proprietary or enforceable rights to the business name or company name. As a result, it is important to also consider registering the business name or company name as a trade mark.
Domain names acquired through service providers, such as Go Daddy and the like, does not on its own provide you with trade mark protection.
If you operate a Business in Australia and have registered one or more trade marks for protection in Australia, it is important to be aware that such protection does not automatically protect your trade mark internationally.
Trade marks are enforceable in the jurisdiction where protection has been applied for, granted and current.
If you export goods, trade mark registration in Australia alone will be insufficient to protect your brand internationally.
If you already hold an Australian trade mark, there are two (2) avenues you can follow if you want to extend trade mark protection overseas:
- File an application directly in each country you require trade mark protection; or
- If the country you require protection is a party to the Madrid Protocol, file a single application through IP Australia nominating those Madrid Protocol countries in which protection is required.
Whether it is better to apply directly to a country of interest instead of seeking international registration under the Madrid Protocol will depend on individual circumstances.
Our clients have interests in a number of overseas countries. We are experienced in assisting our clients with international trade mark advice and registering their trade marks internationally, such as:
- New Zealand
Greyson Legal are experienced Redcliffe trademark lawyers providing trademark registration services on the Sunshine Coast and north Brisbane. Contact us now for no obligation discussion on how we can assist you.