Follow these five simple steps to make sure everything’s in order with your trade marks, whether you’re a start-up or an established business.
1. TRADE MARK INTRODUCTION
A trade mark is a sign used to distinguish your goods or services from those of other businesses. A trade mark is an essential tool for your business; an intangible asset that must be registered to enable protection of your brands. It can be what sets you apart from your competition and what protects you from them. Why trade marks are required in every business today and the process for registration are discussed below.
A trade mark can be a name, a logo, a slogan or any combination of these and even sounds and smells can be trade marked. For every new business it should be included in your initial business planning and in the early stages of a business, a trade mark may be your only protection from other parties copying your intellectual property. The more your business grows the more chance there is of copying by others, so the sooner you have trade mark protection the better. Do not leave it until you have a problem before securing your brand with a trade mark!
2. TRADE MARK PROCESS
The registration of your trade mark should start with a thorough search of existing Australian records to ensure there are no identical and no phonetically or visually similar trade marks already registered or in use for identical or similar goods or services. A registered Trade Mark Attorney should be used to conduct these searches and are undoubtedly worthwhile, as where a search is not conducted there may be objections raised to your trade mark which can result in restarting of the entire process from scratch.
There are a number of formalities required to complete your trade mark application and one of the most important is the designation of the goods and services your trade mark will cover. In Australia there are 45 different classes of goods and services that you can register in. Registration in the correct classes is essential, as using incorrect classes can render your trade mark useless. A registered Trade Mark Attorney who has significant experience should be used to ensure the correct classification and to obtain the widest possible protection within each class of goods and services designated.
Once underway a trade mark in Australia will take at least sevenm months to be registered. This is due to Australia being a member of an international convention where trade marks from other countries can be filed in Australia and backdating of the application is allowed. This also allows applications filed in Australia to be filed in another member country and the filing date backdated up to six months.
If there are any objections raised in relation to an application, an official report will be issued or where there are no objections raised by the Australian Trade Mark Office your trade mark will proceed to be advertised in an official trade marks journal before being registered to ensure no other party claims a right to the mark. Every trade mark must be advertised for a period of three months in the trade mark journal before it can be registered.
Once registered your trade mark will be registered from the date of the application and it is then an asset of your business that can be used, licensed and sold as you see fit. Initially a trade mark in Australia is valid for 10 years and renewal fees must be paid every 10 years to ensure your trade mark remains registered.
3. TRADE MARK MANAGEMENT & MONITORING
Once a trade mark is registered you should not forget it and further steps should be taken to ensure your rights are not diminished. Trade mark monitoring is recommended for each registered trade mark, where you should monitor the marketplace for use of any similar marks. Your Trade Mark Attorney can also ‘monitor’ the Australian records to keep you appraised of any new trade mark applications that you believe are similar and could potentially damage your business or reputation.
There are also a range of deadlines that should be kept in mind once you have your trade mark registered. One example is to ensure you use your trade mark, for if you do not use your trade mark for a specified period of time it can be removed for “non use”.
4. TRADE MARK INFRINGEMENT
One of the main benefits of trade mark registration is the relative ease of enforcement when compared against other legal avenues. Section 120(1) Of the Australian Trade Marks Act outlines trade mark infringement as:
“A person infringes a registered trade mark if the person uses as a trade mark a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.”
There is no requirement to show you have a reputation for your registered trade mark as there is with other legal avenues. Contact should be made with your Trade Mark Attorney for advice prior to any contact with a potential infringer and often a letter from your attorney is all that may be required to resolve a matter.
Your trade mark is akin to your business insurance policy, where for a minimum fee you may protect your brands from copying by others. As with everything in business timing is of the essence and although you may have never had an infringement issue in the past, there is no point taking out insurance after the fire!
5. INTERNATIONAL TRADE MARKING
The registration of a trade mark should be undertaken in every country where the business brand will be used, sold or licensed. Each country has its own practice and procedures required to obtain a trade mark registration.
The Madrid Protocol is an international trade mark agreement that allows the registration of a trade mark (which is already filed in Australia) to one or all of the 79 countries who are a member to the agreement. A Madrid Protocol international trade mark application can save thousands and is intended to be an efficient and cost-effective way to gain international trade mark protection in a number of countries. To proceed with a Madrid Protocol trade mark application it must be based on an existing Australian trade mark. Not all countries are part of the Protocol. For Australian business, some countries of note that are not included in the Protocol include New Zealand and Canada. For these countries and any other countries not a part of the Protocol, a separate trade mark application must be made. Applications to separate countries require an address for service in that country. This generally encompasses the engagement of a Trade Mark Attorney to oversee the application.
The ultimate time taken to complete an international trade mark can differ significantly. If the correct procedures are not followed the application can be held up by many months until all filing deficiencies are rectified. An experienced Trade Mark Attorney can ensure that all requirements are met and the application will proceed without delay.
–Tom Rinder is a Trade Marks Attorney for MacMillan Trade Marks and a member of the IP Society of Australia & New Zealand