Trade Mark Frequently Asked Questions

Trade marks are one the most cost effective ways to protect your business using registered intellectual property rights. 

Trade marks are cost effective and are registered in blocks of 10 years meaning once you have your trade mark registered you there is no active management of the trade mark needed, so long as you continue to use it properly.

Start-up companies and small businesses look to register their brands for a number of reasons, the most common being to show ownership of their brand and the second to mitigate risk of infringing another parties trade mark. Having a trade mark registered is greatly reduces the risk of running your business under that brand.

In this blog I have answered the most common questions new client's ask me before starting the trade mark application process.

What is a Trademark?

A trade mark is a sign that is used to distinguish your goods or services from those provided by any other person.  

Trade marks are used to so that consumers can easily identify the source of goods and services. Trade marks are an effective marketing tool to advertise your product by providing a unique and recognisable identifier in the marketplace.

Trade marks can be formed by using or combining signs such as words, numbers, names, brands, colour, shape, packaging, smell or sound.

The protection a trade mark can give is different and much greater than registering a business, company or domain name because only trade marks confer proprietary rights which allow you the sole right to use and enjoy the trade mark. 

Registered business names and company names don't provide ownership of the name and there are many examples where people have registered company or business names but have been unable to actually trade under these names because someone else owns the trade mark.

Where do I start? 

The starting point for most inventors is to choose or design a trade mark that distinguishes their product from others in the market. 

Trade marks cannot be registered if they are descriptive of the product or services you wish to sell.  If other traders will ordinarily need to use the same or similar trade mark to advertise or describe their goods and services then it's unlikely you will be able to register the trade mark yourself (although contact us because often there are tips and tricks to make it less descriptive). Simply put, the more descriptive a trade mark is of the actual product or service, the less likely it is registrable.  In addition common names or geographical locations may not be able to be registered. 

To see whether your trade mark can be registered, you should first check the IP Australia database (click here) to see if anyone else has already registered a trade mark for your desired good or service. Beware though, searching can be tricky and while it may be easy to search for exact matches it is more difficult to find deceptively similar trade marks which may also stop you from using your chosen brand name.

Your trade mark attorney can perform more comprehensive registrability searches to provide advice on the likelihood of registration.  This assessment only a few days and unless you have good reason for not doing so, we recommend your first step is to have us perform this preliminary assessment to save unnecessary time and expenditure. 

My Trade mark is distinctive and registrable, what is the next step?

If the preliminary assessment shows that your trademark is distinctive and registrable, the next step is to file a trade mark application. Filing a trademark application secures the date from which a trademark is enforceable once the trademark is registered. 

You need to make a decision or seek advice on whether you would like a trademark for a specific product or to a class of products. Securing a trademark for a specified class will give protection to products you propose to sell in the future. An example of this would be a range or product line of sporting goods, or accessories. 

Upon application, a thorough examination will be conducted to see if the trademark meets the registration criteria under the Trade Marks Act 1995. Part of this process involves publishing the trademark details on the Official Journal of Trade Marks to invite people who oppose your application. You are entitled to respond to any oppositions and this will be taken into account in the examination process. 

At the conclusion of the examination, you will receive notification stating the outcome of your application. If the outcome is unsuccessful, you will be given a report stating the requirements you need to meet should you wish to continue with the application and you have 15 months to meet these requirements. Failure to do so may cause the application to lapse. 

It is important to note that registration of your trademark with IP Australia will only protect your trademark in Australia. If you want your trademark registered overseas you will need to file an application in that overseas country or nominate the countries you wish to register. 

Your trade mark attorney can also assist you to protect your trade mark overseas

What if I decide not to register my Trademark?

Although a trade mark does not have to be registered, it is highly recommended because of the time and cost involved in bringing actions under an infringement of an unregistered trade mark. 

Enforcement proceedings will also be more complicated as you have to prove you have established goodwill under your unregistered trade mark rather than just proving infringement of a registered trade mark. Given the low cost of trade mark registration, registration should be a priority for all businesses to secure your brand and reduce the risk of infringing another brand.

Why Should I Use IP Guardian?

Ultimately, only a small number of “do-it-yourself” applications are successful. Most are abandoned due to insufficient knowledge of the application process or requirements. Even if the trade marks are registered, in many cases he have seen the protection is too narrow and there may be validity issues preventing proper trade mark enforcement. This means the registrant may not be able to enforce the trade mark when needed. Professional advice is therefore essential for the best outcome.

IP Guardian Patent and Trade Mark Attorneys offer fixed fee pricing for most of the trade mark process so you can plan your commercialisation strategy.  

Please contact us for a free and confidential no obligation consultation on your patent needs.

Barry Meskin

Principal Patent and Trade Mark Attorney 

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Barry Meskin

Registered Patent and Trade Mark Attorney with significant experience obtaining all forms of registered intellectual property. I hold a Bachelor of Science in Engineering, a Masters of Business Administration and a Masters of Intellectual Property. I’m passionate about showing my clients how they can protect their brands through trademark registrations.