Protecting Your Brand Name in Australia: Trademarks and Registration

Understanding Trademark Law in Australia

In Australia, a trademark is a legally protected sign used to distinguish your goods or services from those of other traders. This sign can be a word, phrase, logo, picture, sound, scent, colour, or a combination of these. Registering a trademark grants you exclusive rights to use that mark in relation to the goods or services it's registered for, preventing others from using a similar mark that could cause confusion.

The Trade Marks Act 1995 (Cth) governs trademark law in Australia. Key aspects to understand include:

Registration is not mandatory: You can establish common law rights to a brand name through use, but registration provides significantly stronger protection and easier enforcement.
Territoriality: Australian trademark registration only protects your brand within Australia. If you operate internationally, you'll need to seek trademark protection in other relevant countries. Consider exploring options for international trademark protection if you plan to expand our services globally.
Classes of Goods and Services: Trademarks are registered in specific classes of goods and services. You need to identify the relevant classes for your business activities. The Nice Classification system is used internationally.
Renewals: Trademark registrations are valid for 10 years and can be renewed indefinitely, provided renewal fees are paid.
Infringement: Trademark infringement occurs when someone uses a mark that is substantially identical or deceptively similar to your registered trademark in relation to similar goods or services, and that use is likely to deceive or cause confusion.

Common Mistakes to Avoid

Assuming Business Name Registration Equals Trademark Protection: Registering a business name with ASIC does not grant you trademark rights. It simply registers your business entity. You still need to register a trademark separately.
Using a Generic or Descriptive Term: Trademarks must be distinctive. A term that merely describes your goods or services is unlikely to be registrable. For example, "Delicious Apples" would be difficult to trademark for an apple orchard.
Failing to Conduct a Thorough Search: Before applying for a trademark, it's crucial to conduct a comprehensive search to identify any existing similar marks. This can save you time and money in the long run.

Conducting a Trademark Search

Before investing time and resources into developing a brand and applying for a trademark, perform a thorough search. This will help you determine if your desired brand name is already in use or if there are similar marks that could create a conflict. A comprehensive search can significantly increase your chances of successful registration and avoid potential legal disputes.

Where to Search

IP Australia's ATMOSS Database: This is the primary database for searching registered and pending trademarks in Australia. It's essential to search this database thoroughly.
Business Name Registers: Search ASIC's business name register and state-based business name registers to identify businesses using similar names, even if they haven't registered a trademark.
Domain Name Registries: Check domain name registries (e.g., .com.au, .com) to see if your desired brand name is already in use as a domain name. This can indicate potential online presence and brand recognition.
Google and Other Search Engines: Conduct general internet searches to identify any businesses or organisations using your desired brand name or similar terms, even if they haven't registered a trademark or business name.

How to Search Effectively

Search for Exact Matches: Start by searching for the exact brand name you want to use.
Search for Similar Terms: Consider variations of your brand name, including synonyms, misspellings, and abbreviations.
Search Across Relevant Classes: Search across all classes of goods and services that are relevant to your business, even if you don't plan to operate in all of those classes immediately. You can learn more about Elos and how we can help you determine the relevant classes for your business.
Consider Phonetic Similarity: Think about how your brand name sounds. Search for trademarks that sound similar, even if they are spelled differently.

Professional Trademark Search Services

While you can conduct your own trademark search, engaging a professional trademark search service can provide a more comprehensive and reliable result. These services have access to specialised databases and expertise in trademark law, allowing them to identify potential conflicts that you might miss. They can also provide an opinion on the registrability of your trademark.

Filing a Trademark Application

Once you've conducted a thorough search and are confident that your desired brand name is available, you can proceed with filing a trademark application with IP Australia. This process involves several steps and requires careful attention to detail.

Steps in the Application Process

• Prepare Your Application: Gather all the necessary information, including your business details, the trademark you want to register, and the classes of goods and services it will cover. Ensure the representation of your trademark is clear and accurate.

• File Your Application Online: IP Australia encourages online filing through their website. This is generally the fastest and most efficient way to apply. You will need to create an account.

• Examination: IP Australia will examine your application to ensure it meets the legal requirements for registration. This includes assessing whether the trademark is distinctive, whether it conflicts with any existing trademarks, and whether it is otherwise prohibited from registration.

• Acceptance: If your application meets the requirements, IP Australia will accept it for registration.

• Advertisement: Your accepted application will be advertised in the Australian Official Journal of Trade Marks, giving other parties the opportunity to oppose the registration.

• Opposition Period: During the opposition period (usually two months), any party who believes that your trademark should not be registered can file a notice of opposition.

• Registration: If no opposition is filed, or if any opposition is unsuccessful, your trademark will be registered. You will receive a certificate of registration.

Tips for a Successful Application

Be Specific with Your Goods and Services: Clearly and accurately describe the goods and services that your trademark will cover. Avoid vague or overly broad descriptions.
Provide a High-Quality Representation of Your Trademark: Ensure that the image or description of your trademark is clear, accurate, and easy to understand.
Respond Promptly to IP Australia's Communications: IP Australia may request further information or clarification during the examination process. Respond promptly and thoroughly to avoid delays or rejection of your application.

Using a Trademark Attorney

While you can file a trademark application yourself, engaging a trademark attorney can significantly increase your chances of success. Trademark attorneys have expertise in trademark law and can guide you through the application process, conduct thorough searches, and represent you in any opposition proceedings. Consider what we offer in terms of legal support to ensure your trademark application is handled professionally.

Monitoring and Enforcing Your Trademark

Registering a trademark is only the first step in protecting your brand. You also need to actively monitor the market for potential infringements and take appropriate action to enforce your rights. Failure to do so can weaken your trademark and make it more difficult to protect in the future.

Monitoring for Infringement

Regularly Search the Internet: Use search engines and social media to monitor for unauthorised use of your trademark or similar marks.
Monitor Business Name and Domain Name Registrations: Check ASIC's business name register and domain name registries for new registrations that may infringe your trademark.
Attend Industry Events and Trade Shows: Keep an eye out for potential infringements at industry events and trade shows.
Set Up Google Alerts: Create Google Alerts for your trademark to receive notifications when it is mentioned online.

Enforcing Your Trademark Rights

If you discover a potential infringement of your trademark, take the following steps:

• Gather Evidence: Collect evidence of the infringement, including screenshots, website URLs, and business details.

Use Your Trademark Symbol: Always use the ® symbol next to your registered trademark to indicate that it is protected. Use the ™ symbol for unregistered trademarks that you are claiming rights in.
Educate Your Employees: Train your employees to be aware of your trademark rights and to report any potential infringements they encounter.
Monitor Your Supply Chain: Ensure that your suppliers and distributors are not using your trademark without authorisation.
Register Your Trademark as a Domain Name: Register your trademark as a domain name in all relevant extensions (e.g., .com.au, .com, .net) to prevent others from using it online.
Enforce Your Trademark Rights Consistently: Take action against all infringements of your trademark, no matter how small. This will send a clear message that you are serious about protecting your brand.

Protecting your brand name is an ongoing process that requires vigilance and proactive measures. By understanding trademark law, conducting thorough searches, filing a strong application, and actively monitoring for infringement, you can safeguard your brand and build a valuable asset for your business. If you have frequently asked questions, our team can assist with your queries.