A trade mark is any sign that a person or company uses to distinguish its goods and services from the goods and services of competitors. It includes any letter, word, name, signature, and numeral, combinations of letters and numerals, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
Series trade marks resemble each other in material particulars and are different in respect of the colour of any part of the trade mark for example.
A trade mark application should be filed in the name of the person or entity that owns the trade mark or that has the intention to use or authorise another person to use the trade mark for goods and/or services. It is not possible to file a trade mark application using a business name because it is not a legal entity. It is also not possible to file a trade mark application in the name of a Trust. The application should be filed on the name of the Trustee for the Trust.
Claiming priority means that you can file trade marks applications overseas within 6 months of filing in Australia and the filing date of the overseas applications will be backdated to the Australian filing date.
A trade mark application must be filed in one or more classes depending on where the goods and/or services are classified. There are 34 classes of goods and 11 classes of services. Your application for the trade mark should be filed in all of the classes in which the goods and/or services for which the trade mark is used or intended to be used are classified.
A search is important because it will allow you to check whether a third party has already used or registered the same trade mark or a similar trade mark for the same or similar goods/services or for goods that are closely related to services. The search will tell you whether you will be infringing any earlier third party rights when you start using the trade mark. It will also tell you whether any obstacles exist to obtaining registration of the trade mark.
A trade mark watch means that you monitor the Trade Marks Register of a particular country to keep an eye on the status of a trade mark application so that you have the opportunity of opposing the application if it is accepted. A trade mark watch is also useful to monitor the filing activities of a competitor for example. A trade mark watch can also be done in the marketplace to monitor third party infringing activity which will allow you to take enforcement action against third parties to protect your trade mark rights.
In Australia, when an application for a trade mark is still pending (“parent application”), the Applicant may file a divisional application for the trade mark for some of the goods and/or services under the parent application. The divisional application will be given a new number and will have the same filing date as the parent application, which will either lapse or be accepted for the remaining goods/services.
In New Zealand, only classes or goods and services which are not subject to examination objections or an opposition may be divided out from the parent application into a new divisional application. The problematic classes or goods and services must stay with the parent application.
The purpose of requesting a divisional application is to enable the classes or goods and services which are not subject to examination objections or an opposition to proceed to registration without further delay.
IP Australia and/or IPONZ will examine the respective applications. If objections are not raised, the application will be advertised as accepted in the respective official journals for mandatory opposition periods of 2 months (in Australia) and 3 months (in New Zealand). At the time of reporting acceptance, you will receive an invoice relating to charges for processing the application from acceptance to registration.
If objections are raised, we will assume, unless you instruct us to the contrary, that you wish for us to provide our recommendations for overcoming the objections which will include additional charges.
In Australia, applications are typically examined within 4 months of filing. In New Zealand, examination occurs earlier, usually around 2 weeks after filing.
In Australia, a request to expedite examination can be made. The request needs to be justified with reasons in a Declaration. Requests for expedited examination are usually granted. Because examination in New Zealand takes place within 2 weeks of filing, there is no provision to request expedited examination.
In a straightforward case where no objections are raised on examination and there is no opposition to the application, it takes between 7-8 months to register a trade mark in Australia and in New Zealand.
IP Australia and IPONZ will consider a colour representation of your mark as if it was filed in black and white. If the application is to be limited to specific colours, it will be necessary to enter an endorsement limiting the application. If you will be filing overseas and basing those applications on your Australian trade mark application, then it’s better to use a black and white version of the trade mark to avoid problems with different practices in overseas countries regarding colour marks.
Provided your word mark is distinctive, filing the application in simple block lettering will give protection for all clearly legible stylised forms and consequently would protect the mark in its stylised form. If the mark is limited to a stylised form, it may not give protection for the mark in other stylised forms.
In Australia, trade mark registrations and business and company name registrations operate independently of each other (New Zealand does not maintain a business name register, only a company name register). The registration of a business name and/or of a domain name in Australia does not provide ownership rights in the name. You still need to use or register a trade mark to claim ownership rights in the name. In Australia and in New Zealand, the first user of a trade mark is the owner of the mark. For trade marks that have not been used in either country, the person that files the first application is the owner of the trade mark.
Yes. If third parties are to be authorised to use the mark, it is important that such use be under the control of the proprietor. Such control may be exercised over the quality of the goods and/or services by virtue of a formal license agreement, or by financial control over the user’s relevant trading activities.
A trade mark should be used as an adjective and followed by a generic or descriptive word that describes the goods or services for example, APPLE ® computers.
Before an application for a trade mark has been filed and while the application is pending, the ™ symbol may be used with the trade mark, indicating that ownership rights are claimed in the mark. After the trade mark is registered, the ® symbol may be used with the mark. It is an offence to use the ® symbol in Australia and in New Zealand if the mark is not registered in each country. While you don’t need to use either symbol to retain protection in Australia or in New Zealand, use of a symbol alerts the public to ownership of the mark and may act as a warning to deter potential infringers.
In most countries, including in Australia and in New Zealand, a trade mark is registered for an initial period of ten years. It can be renewed every ten years subject to payment of a renewal fee.