IP 101 - Protecting your IP with a Trade Mark
Summary
Trade mark registration is a key way to protect your business’s brand, image and reputation
Registering your business name and logo as a trade mark gives your business exclusive use of the trade mark for certain goods and services.
It is a good idea to search the IP Australia TM register first to make sure your trade mark is not too similar to an existing trade mark or that it is not too descriptive.
Introduction
Registering your business name and logo as a trade mark gives your business exclusive use of the trade mark for certain goods and services. Trade mark registration is a key way to protect your business’s brand, image and reputation. If you don’t register a trade mark, someone may come into competition with you using a very similar name or logo and, even worse, prevent you from using yours.
When do I need it?
Your business’s reputation is built on the power of your business name and logo, so it’s important to protect them with a registered trade mark early on. If you’re only at the very start of your business venture, it might seem too soon to consider.
But as your business becomes established, registering a trade mark will become increasingly more important. You should keep in mind that the registration process takes at least 8 months, and sometimes longer.
How do I use it?
You can apply to register trade marks with a government agency called IP Australia, for protection within Australia. IP Australia will charge a fee per trade mark and it will take at least 7.5 months to get an Australian trade mark registered. It’s possible to do it yourself, but it can be quite technical and confusing if you’ve never done it before, so it’s normally a good idea to get a lawyer specialising in trade marks to help you.
What are the steps?
There are 4 main steps in to trade mark registration:
Prepare – You can check the availability of your trade mark by using IP Australia’s trade mark searcher. This search tool makes it quick and easy to check for similar trade marks before you make an application. Alternatively, if you’re feeling overwhelmed you can engage an IP lawyer to conduct a detailed search of the trade mark register. An IP lawyer will spot any potential difficulties with registering your mark, and make suggestions regarding how to put together an application with the best prospects of success.
Apply – Once you’ve gone through the search process and decided on a mark with good prospects of success, you’ll need to put together an application for a trade mark with the right description and the classes of goods and services. You can use the free availability tool from IP Australia to check and self file an application for trade marks, or a lawyer can help you with this process too.
Examination – IP Australia will consider your application and check if you meet all of the legislative requirements. Sometimes, a simple error such as using the wrong class or description can lead the examiner to identify issues with your application. This is why it is important to do your homework before you apply because mistakes can end up costing you more and delay your application.
Registration – Once your trade mark passes the examination stage, IP Australia will advertise it and make it available for opposition by third parties. This again is why it is important to do be well prepared, because a proper search will be able to determine whether your likely to face opposition before you spend all the time and money into making a futile application. If there are no opposition after 2 months, your trade mark will be automatically registered!
Registering a Trade Mark can be complex and daunting, as it’s hard to know what to include and how to word it. It’s a good idea to invest in a lawyer to assist you with this process, as it’s a one-off cost that can save you from disputes and headaches in the long run – and ensure you get a good deal.
If you would like any further information on trade marks, please contact:
Kate Cantrell
Partner
kate@fuselaw.com.au
+61 401 370 179