Trademark Lawyers Melbourne
A trademark is a sign or symbol that enables people to differentiate between your brand and the brands of competitors or other businesses. Let one of our trade mark lawyers help you find the best way to protect your trade mark.
Establishing a trademark can be lucrative as it creates an asset (the trademark rights can be sold) and helps to create a strong presence in the market, whilst at the same time preventing competitors from copying your brand.
A Trademark is a form of intellectual property. Other legal forms of intellectual property include copyrights and patents. Trademarks are regulated by IP Australia, and enforced through the Commonwealth Trade Marks Act 1995. This ensures that trademark requirements are uniform throughout the Australian states and territories.
The trademark application process can be complex and lengthy. It is recommended that you seek the assistance of a legal professional, like LGM Advisors, who are experts in intellectual property if you are unsure about how to go ahead with an application.
Eligibility for trademark protection
If you are a company, individual, incorporated association, or a body that exists under legislation (such as a registered charity), you are eligible to register a trademark. The applicant should be the owner of whichever business the trademark is for, and the applicant cannot be a trading or business name. In the case of a corporation, the trademark application should be made in the corporation’s name, as the corporation is a legal entity in itself.
In order to be granted, the trademark must be intended to be used with particular goods or services, and upon being granted, it must be used with these in the course of trade.
Trademark infringement
Known as ‘passing off’, using a trademark registered to someone else as your own is illegal under the Competition and Consumer Act 2010. Even if the trademark you are using is unregistered, if its owner has been using it long enough to build up a reputable brand they may be able to prevent you using it, even if you register it yourself.
Creating an application
First you will need to determine whether or not the trademark has already been registered by someone else. It is advisable that you seek legal assistance in doing this, as an intellectual property law firm likely has the resources and knowledge required to properly undertake such a search. IP Australia also publishes information making it easier to undertake a proper trademark search.
Next, you will need to consider whether your trademark contains any prohibited or common signs that are not eligible for registration. Names that are geographical, surnames or names commonly associated with a particular product or service may be difficult to register, as they may not necessarily distinguish between your brand and that of competitors. You cannot register trademarks that are scandalous, misleading, or otherwise unlawful. Trademarks that cause genuine offence to people are unable to be registered.
You will then need to determine which class your goods or services fall under. IP Australia uses a list of 45 classes, which encompass almost all goods and services. After doing this, you may file your application. This can be done online through IP Australia’s trademark portal or if you are unsure of the process, you can contact us below.
The application processing period is approximately three to four months from the date the application was filed. It is possible to request that your application be examined sooner, however, without requiring the payment of any extra fees.
Acceptance
Should your application be approved, you will be issue with a notice of acceptance by IP Australia. After receiving this notice and paying the required fees, your trademark will be registered. This process takes several months, so the total time required for a successful application is about 7 or 8 months. Once it is registered, your trademark is protected for a period of up to 10 years if you are continually using it in the course of trade. If you cease using it, your registration may be removed.
Advertisement period
Other businesses will have two months to announce their opposition to your trademark once it is advertised. This is another reason to obtain legal advice when filing a trademark application, as any holes in your trademark’s validity may be exploited by competitors.
Prohibitions
Trademarks that are likely to be misleading, deceptive, scandalous, or that contain illegal content are prohibited. There are also certain signs or symbols which cannot legally be trademarked, such as the Olympic Rings or the flag or seal of a state.
Trademarks are considered scandalous if they are deemed to be genuinely offensive. Something that is merely rude or made in poor taste may escape this definition. Generally for something to be deemed truly offensive it must include elements that are abusive in a religious, personal, racial, sexual, or otherwise bigoted way.
Deceptive or misleading trademarks are those that contain information that is portrayed up-front as being genuine, which is in fact not. For example, a trademark that includes a domain name not owned by the business registering that trademark would be considered deceptive or misleading and the trademark would not be granted. Similarly, it is considered deceptive to use the name of an individual or entity in a trademark without their official endorsement, as this would suggest an affiliation without there actually being one.
Adverse examination report
If your application does not meet the requirements set out by the Act, IP Australia will issue you with an adverse examination report. These are issued at the end of the examination period, so about four months from the date the application was filed. An adverse examination report may list the problems with your proposed trademark and the reason/s it was not accepted.
You may draft a written response to an adverse examination report should you wish for your application to be reconsidered. It is recommended that you draft this response with the help of a legal professional who can decide the best way in which to pursue your application. Upon receiving the report, you have 15 months to try to get the application accepted before it lapses.
Trademark is an important instrument for the protection of intellectual property in Australia and internationally. It also represents an important step forward for businesses trying to establish themselves in the marketplace, as a trademark can provide a brand with valuable legitimacy. The process can be lengthy and complicated, however, and any mishandling of the process can potentially cost your business time and money. It is recommended that a trademark application be filed with the assistance of an intellectual property lawyer, particularly one who has knowledge of your area of business.
Helpful links:
For assistance, call to speak to one of our Melbourne trademark lawyers on (03) 9832 0608 or by email at contact@lgmadvisors.com.au.