Applying for a Trademark:

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;
• Renewals;
• 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
  • assignment.
• 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.

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.

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.