Whenever I design a logo I advise my clients to get the business name trademarked. Whilst I always check databases and the web on designs, it is still highly recommended to get in contact with a professional trademark lawyer to register the business or product first and the design after the logo is finalised.
One of my clients, Colin Cheung, from the Melbourne law firm actuate ip, allowed me to publish some of the most important questions and their answers on this topic. Thank you, Colin.
1. Why are trade mark searches important?
Trade mark searches serve the purpose of (a) ensuring that your trade mark can be registered and (b) that your use of the proposed trade mark will not potentially infringe the rights of other traders with existing rights. A trade mark search will place your business in a position to make an informed decision regarding the availability of a trade mark (both for use and for registration), prior to committing valuable resources to a chosen brand name. It will avoid placing your business in a position of investing time and money in a business or brand name, which later cannot be registered or is changed as a result of a disruptive trade mark dispute.
2. What types of searches can be conducted?
a) Comprehensive Register Search - this is a comprehensive search of the Australian Trade Marks Register to identify any identical and similar marks to assess whether your trade mark is registrable and to identify any potential trade mark infringement risks. A written opinion outlining risks and strategies for protecting your trade mark is provided.
b) Full Availability Search - this search includes a comprehensive search of the Australian Trade Marks Register as well as a structured marketplace search to assess unregistered use by other traders. A written opinion outlining risks and strategies for protecting your brand is provided. This search is recommended for new businesses and businesses wishing to trade under a new name.
3. Can I conduct a trade mark search myself?
It is possible to conduct your own search and this can often be a good starting point. However, it is advisable that ultimately a search be conducted by a Trade Marks Attorney. This is because a trade mark will not be registered if it is either ‘substantially identical’ to or ‘deceptively similar’ with a prior trade mark registration or application. A Trade Marks Attorney has the expertise to understand these tests of similarity and the associated legal requirements.
4. I have my business name registered, so why do I need a trade mark?
If you intend to trade under a name other than your own personal name, it is a requirement that you register the business name with the relevant state authority. However, a business name does not provide legal rights to a name. Hence, registering your business name as a trade mark is also recommended. Indeed, it is possible to register a business name and still be infringing another trader’s rights by virtue of its prior trade mark registration. It is therefore important to have trade mark searches conducted prior to registering your business name to avoid this potential conflict.
5. Are all trade marks registrable?
No, not all trade marks are registrable. If a trade mark is descriptive of the goods or services (eg ‘bright’ for lamps) or is a term which other traders would ordinarily need to use in relation to their goods or services (eg ‘quality’), the mark will be difficult to register. There may be ways to overcome this issue if the trade mark has already been in use for several years. When choosing a trade mark, we recommend selecting a name which is distinctive and unique rather than descriptive.
6. Why is trade mark registration important?
Registration of your name as a trade mark:
• provides your business with the exclusive right to use the mark and protects the developed reputation in your brand;
• provides your business with legally enforceable rights to prevent your competitors, or other traders, from using the mark in relation to your registered goods or services;
• blocks any future trade mark applications made by your competitors or others for identical or similar marks in relation to similar goods or services;
• deters others from adopting your company’s brand by being on a publicly available database which places other traders on notice of your rights. Trade mark registration provides the above rights automatically throughout Australia, irrespective of reputation.
7. How long does it take to register a trade mark?
The entire trade mark registration process generally takes between 6 and 9 months. However, the important date is the application filing date. Your application will have priority over any applications filed after yours. Of course, the rights provided by a trade mark registration cannot be enforced until the mark is actually registered.
8. Do I need a logo designed in order to register a trade mark?
No. A trade mark does not need to be a logo in order to be registered. In fact, the best way to protect a name is usually to register the name itself, irrespective of font, size, colour or stylisation.
9. How long does a trade mark registration last?
A trade mark is initially registered for a period of 10 years. It can then be renewed indefinitely for further 10 year periods. However, if you do not use your trade mark commercially, it is possible for another trader to have it removed from the Register after 5 years.
10. Do I use the TM or ® symbol?
The TM symbol indicates to others that you consider the name/logo as your trade mark. However, it does not mean that the trade mark has been filed or registered. Accordingly, you can use the TM symbol at any stage. The ® symbol means that the trade mark is registered and hence you can only use this symbol next to your trade mark once a registration certificate has been issued (and only in relation to the goods or services for which you have registered the mark).
11. How do I register an international trade mark?
There are a number of options and strategies when considering seeking protection overseas. There is no ‘worldwide trade mark’ as such but there are mechanisms in place which make the process of seeking registration in multiple countries achievable.
The Madrid Protocol provides a means of seeking trade mark registration in multiple countries by way of a single application. It provides a simpler and less expensive means of initiating applications in multiple countries. It also allows for the renewal of registrations in multiple countries in a single step. There are presently 73 member states to the Madrid Protocol, including the USA and China.
The European Community Trade Mark System (CTM) is another means of seeking registration in multiple European countries initiated by a single application.
More detailed info on the trade mark and design registration process can be found on actuate ip's website: www.actuateip.com.au
© Actuate Intellectual Property Pty Ltd April 2010. This content cannot be reproduced or disseminated without our prior written consent. This information is not purporting to be legal advice. If you wish to rely on it, contact actuate ip for specific advice regarding any of these matters.