Posted by: Glenn Ferguson | Date: 21 April 2016
The best way in which to protect your interest in a logo or business name is by registering it as a trade mark in Australia with IP Australia.
You should consider creating a distinctive trade mark if you wish to establish a brand so that your customers know that the goods or services are from you.
If someone has been using an unregistered trade mark for a sufficient period and has built up a reputation they may be able to stop you using the same name or logo, whether you have registered it as a trade mark or not.
Trade marks that are not registered may still be protected under common law and enforceable using the provisions of the Competition and Consumer Act 2010, however protecting a trade mark without the benefit of a registered trade mark may be more difficult and expensive.
Another person can apply for a court order to remove or cancel your registered trade mark if they feel the trade mark conflicts with their unregistered trade mark and they can prove that they have come up with the mark before you. If this happens it is your responsibility to defend and protect your trade mark, which could be quite expensive and timely.
In order for you to successfully register a trade mark, Section 44 of the Trade Marks Act 1995 (Cth) prescribes that it must not be substantially identical with, or deceptively similar to, a prior registered trade mark in the same or similar classes of goods and services.
There are a number of steps that IP Australia go through starting with an initial examination. IP Australia will then advertise in the Official Journal of Trademarks and anyone has 3 months thereafter to oppose the registration. If after the initial examination your trade mark is accepted, you can use the ™ symbol with your logo. If no one opposes your application, and once it is registered in 7.5 months’ time, you can use the ® symbol to indicate it is registered.
When you apply to register a trade mark, you must provide a description of the goods or services you intend to use your trade mark on. These goods or services need to be identified from one or more classes.
The classification search database (pick-list) will help you recognise the correct classification of goods and services for your trade mark. The database also includes a snapshot of the types of goods and services that fall in each class (class headings).
Division 2 of Part 5 of the Trade Marks Act 1995 (Cth) provides that an individual who can evidence prior use of your proposed trade mark or a similar mark, or who has acquired a reputation in Australia in association with your proposed trade mark, will have grounds to oppose the registration of your trade mark during the opposition period associated with the registration process.
Once you apply for a trade mark, you may find yourself a recipient of letters regarding oversees registration of your trade mark, especially copies of unofficial invoices for IP services. These letters and invoices should be treated with caution and ignored. Only correspondence received from IP Australia should be considered.
At FC Lawyers we frequently assist clients in registering their logos and business names, and are happy to answer any readers’ queries. Contact me today if you require any assistance with protecting your logo or business name.