In very broad terms, a Trade Mark is used to distinguish goods or services provided in the course of trade by a person from goods or services provided by any other person. Trade Marks can be a letter, logo, picture, phrase, shape, smell, sound, word or any combination of these. It is important that you remember that the registration of a Company Name, Domain Name or Business Name does not confer any proprietary rights in the name. Effectively, this means that even if you have been using a trading name for years, the successful registrant of your brand as a Trademark can seek to squeeze you out of the industry.
If you wish to have exclusive registration rights to a Trade Mark, you must apply for registration of that Trade Mark. Once the Trade Mark is registered, you will have exclusive rights to that Trade Mark within Australia for an initial period of ten (10) years. Whilst it is not compulsory to register your Trade Mark or a sign that you are using, registration of your rights will mean that your ability to enforce your rights and to stop others from using your Trade Mark will usually be stronger.
This is where the assistance of an experienced Intellectual Property Lawyer, becomes crucial. During our first appointment with you, we will obtain an understanding of the your proposed or existing business structure, your brand name and the work that we expect that we will need to do. We will then provide you with a written estimate of our fees and disbursements, up-front, in writing, before we commence the work.
We have successfully represented clients in a range of complex or high profile Trade Mark infringement disputes (including disputes involving large national and multi-national organizations and owners of national and international brands) and common Law passing off claims – we have a good understanding of this area of the law and the types of disputes that arise, in this area.
If you decide to instruct us to assist you with the Registration of a Trade Mark, the work we carry out will usually involve some preliminary legal research and advising you on the prospects of your Application for a Trade Mark being granted, determining the class or classes and description of the Trade Mark and then applying for the Trade Mark, as well as liaising with the Trade Mark officer and responding to any correspondence from the Trademarks office.
What we can help with
If you conduct a successful business, or are about to commence trading and want to protect your intellectual property (such as a unique name or corporate device), applying for a trademark can be one way in which you can ensure that no other person or company can use that same or similar name or device. This is important because the owner of a business will naturally want to protect his reputation and goodwill, and thus the value of the business itself.
A trade mark could therefore be a business or product name, a sub-brand, a catch-phrase or slogan, a recognizable visual device like a logo or image. A thing that can be trademarked could also be a distinctive product shape, a method of packaging, as well as a colour, letter, number, sound or scent. Trademarks are governed by the provisions of the Trade Marks Act 1995 (Cth). The matters that you may need legal assistance with will therefore include the following:
- Branding (selecting the right brand name that is appropriate for your business). For more information, see our section relating to “Branding”;
- Searching the relevant databases (domestic and international) so that your brand or trademark is not itself infringing the rights of another party;
- The process of application and registration;
- Responding to examination reports;
- Fast-tracking the application in cases of urgency or where time is of the essence;
- Domain name advise, registration and transfers;
- The provision of advise and legal representation in the event:
- that somebody has infringed your trademark,
- where you are accused of infringing somebody’s trademark, or
- opposition and non-use of trademark proceedings.
- Advice on:
- corporate structuring for the protection of your brand name, corporate device and trade mark,
- licensing of your intellectual property,
- joint venture, and
- Representation in Court for all disputes relating to trade mark applications, objections and infringements;
- Advice and representation in common law passing off, both for plaintiffs and defendants.
What is a registered and unregistered trademark?
An unregistered trademark is a trademark that you have customarily used for a period of time and in connection with your business. It is not necessary to register a trademark, but it does help in making your intellectual property safer from abuse by other business entities that adopt it, or use something that looks similar. If you have an unregistered trademark and it is being infringed, you will have to prove that you have an established reputation in the mark. This is an evidence based exercise and the law in relation to how this can be done is constantly growing as decisions are made in Courts. Any legal representation that a solicitor can offer in relation to action in common law will involve a process of legal research in connection with a detailed and diligent investigation of all evidence.
Registration offers a layer of protection for your trademark. A person who wants to use a trademark for a particular industry can register it for that particular industry. Alternatively, a trademark can be registered for multiple areas, but an additional fee will be payable for each (there are 42 in total). Registration can be made by the entity that has control over the quality of the product. Generally, this may be the manufacturer, but this is not always the case. Registration is the affected through IP Australia.
When will a Registration of a trademark fail?
IP Australia will process the application for registration of a trademark, and consider it in accordance with the following broad issues:
The first is the likelihood that the trademark may need to be used by other people or companies working in the industry. For example, it will be difficult or impossible to register words or symbols that are widely and generically used in that industry because it would hamper or interfere with the rest of the industry participants in conducting their business sand doing their work. Other considerations will weigh the similarity of the proposed trademark to an already existing one. The reasons for this are obvious: people register their trademarks because they want them protected. There is no point in therefore allowing an identical or confusing trademark to be registered. These issues are relevant for applications concerning any item for which a trademark application is made.
It is important that you obtain the right advice in relation to your proposed trademark so that the application process can be affected efficiently and economically.
If you require assistance with an application for a trademark, you should make an appointment to see one of our Intellectual Property & Media Solicitor. Please contact us by telephone on (02) 9233 4048 or send an email to firstname.lastname@example.org.
This webpage (and any material or wording appearing on this webpage) is provided for general information purposes only and does not constitute any Legal Advice. It does not take into account your objectives, your instructions or all of the relevant facts and/or circumstances. Navado accepts no responsibility to any person who relies on the information provided on this website. We further refer you to our Disclaimer.
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If you require assistance with a Intellectual Property matter, you should make an appointment to see one of our Lawyers in one of the following locations:
- Intellectual Property Lawyer Sydney
- Trademarks Lawyer Sydney
- Intellectual Property Lawyer Parramatta
- Trademarks Lawyer Parramatta
- Intellectual Property Lawyer North Sydney
- Trademarks Lawyer North Sydney
- Intellectual Property Lawyer Rockdale
- Trademarks Lawyer Rockdale
- Intellectual Property Lawyer Liverpool
- Trademarks Lawyer Liverpool
- Intellectual Property Lawyer Gordon
- Trademarks Lawyer Gordon
- Intellectual Property Lawyer Baulkham Hills
- Trademarks Lawyer Baulkham Hills
- Intellectual Property Lawyer Campbelltown
- Trademarks Lawyer Campbelltown
- Intellectual Property Lawyer Bondi Junction
- Trademarks Lawyer Bondi Junction
- Intellectual Property Lawyer Chatswood
- Trademarks Lawyer Chatswood
- Intellectual Property Lawyer Miranda
- Trademarks Lawyer Miranda
- Intellectual Property Lawyer Bella Vista
- Trademarks Lawyer Bella Vista
- Intellectual Property Lawyer Erina
- Trademarks Lawyer Erina