Trade Marks – Have you considered protecting your logo or business name?

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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.

Benefits of registering a trade mark

  1. You can be in a stronger position to stop other people from using your trade mark as their brand name on the same or similar goods or services as you; and
  2. You have the exclusive right to use your trade mark as a brand name for the goods or services specified in the registration in Australia.

Unregistered trade marks

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.

How do you register a trade mark?

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.

What is a class?

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).

Can someone oppose my application to register a trade mark?

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.

Be aware – unsolicited or fraudulent IP protection, promotional or advertising services

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.

The information provided in this article is for general information and educative purposes in summary form on legal topics which is current at the time it is published. The content does not constitute legal advice or recommendations and should not be relied upon as such. Whilst every care has been taken in the preparation of this article, FC Lawyers cannot accept responsibility for any errors, including those caused by negligence, in the material. We make no representations, statements or warranties about the accuracy or completeness of the information and you should not rely on it. You are advised to make your own independent inquiries regarding the accuracy of any information provided on this website. FC Lawyers does not guarantee, and accepts no legal responsibility whatsoever arising from or in connection to the accuracy, reliability, currency, correctness or completeness of any material contained in this article. Links to third party websites or articles does not constitute any endorsement or approval of those sites or the owners of those sites. Nothing in this article should be construed as granting any licence or right for you to use that content. You should consult the third party’s terms and conditions of use in relation to any third-party content. FC Lawyers disclaims all responsibility and all liability (including liability for negligence) for all expenses, losses, damages and costs you might incur as a result of the information being inaccurate or incomplete in any way. Appropriate legal advice should always be obtained in actual situations.


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