A trademark is branding that acts as a ‘badge of origin’ for your goods and/or services. It can be a word, a logo, a phrase or a tagline.

Nike is a famous example. There is the word NIKE, the Nike ‘swoosh’ logo and the phrase ‘Just do it.’ All of these are trademarks of Nike. If people see a running shoe bearing a Nike trademark, they know the shoe comes from Nike. Other people can’t legally use a Nike trade mark on the same or similar goods. If they do, Nike has the right to stop that infringing use.

A trademark protects your branding.

If you register your trademark for particular goods or services, you can enforce your rights if someone else starts using your trademark (or something confusingly similar) for the same or similar goods or services.

If you have a registered company or business name, that is the name under which you carry on business, but it does not give you brand protection. Crucially, a business or company name does not give you clear rights to stop someone else registering a similar business or company name or a trade mark. Having your brand registered as a trademark gives you a powerful business advantage.

Let’s say you (AB Smith) and your partner (CD Smith) have a business that cleans offices at night called ‘Round the Clock Cleaners’.

Your company name, AB and CD Smith Pty Ltd, is registered with ASIC (the Australian Security and Investments Commission, Australia’s corporate regulator) and the company is registered with the ATO (Australian Taxation Office) for tax purposes.

There will be a large number of companies that have a similar “smith” name. Your company name is not distinctive. But your brand name is what the public knows you as – Round the Clock Cleaners. Your trademarks might be the words ‘Round the Clock Cleaners’, a logo that has a clock with a mop and broom as the hour and second hands and the phrase ‘The cleaners that never sleep.’

Your trademarks are your branding and are key to your business’s identity. Those trademarks deserve protection with trademark registration.

Think of trademarks like security on your house. The more security you have, the more you’re protected.

Having a lock on your front door is a great start towards ensuring your home security. However, adding window locks and a security system can further enhance your safety measures and increases the value of your house.

A registered trademark for your brand is good. If your branding includes a distinctive logo (in trade mark language, a “device”) then registering the words of your brand and your logo is even better.

What is the difference between goods and services?

Goods are products such a can of Coke, a Toyota car or an iPhone.

Services are things you do for others such as a lawn mowing service, a builder, an accountant or a software developer.

Some things can look like both goods and services. For example, a software provider may provide goods in the form of software (computer programs) and services namely software installation and training services.

The owner should be the entity which uses or will be using the trademark. There are two basic options:

1. An individual.

2. A company.

Note: A business name or a trading name are NOT options as they are not legal entities. The reason for this is that a company has the same rights as a natural person and can incur debt, sue and be sued.

This is made very easy for you. At this point of the Aussie Trademark application, you pop some very simple keywords into the search bar. You will be presented with options in a list. Simply, click the + sign on the options which are right for your trademark.

With some search terms you will find there are a lot of options, you may even have to click on the Show more button to find the terms you are looking for. Some search terms only offer a few options. Simply choose the ones which you think are right. If you change your mind, you can always delete the options which appear in green on the right.

Remember to search for all the goods/services which are right for you.

For example Sarah’s Online Shoe Shop – You could search for “shoes”, “retail”, “online”, “polish”, “laces” depending upon what is being sold.

Trademarks, copyright, designs and patents all deal with the protection of different types of intellectual property but they are quite different.

Trademarks protect the branding of goods or services. Words, logos, taglines and even things like smells, shapes, tastes and sounds can be registered as trademarks.

Copyright protects the original content that a person creates. Works like a book, a movie, the lyrics of a song, a podcast, a how-to video on YouTube or the code in software may attract copyright protection. Copyright gives the owner (or someone with the owner’s licence or permission) the exclusive right to reproduce the work and to stop other people reproducing the work.

Designs protect the overall visual appearance of new and distinctive whole products. A registered design does not protect the way the product works. But if you designed a new shape for a dishwasher tablet or a skirt with ruffles or the cut or decorative pattern on a shirt and the design is unique, it can be registered. If you have a registered design, you can stop an unauthorised person from reproducing a product with the same design or appearance.

Patents protect a new invention, whether it’s a new device or process or substance. It must be new, inventive and useful. A patent cannot protect an idea. Patents protect how an invention works or functions. For example, in the field of heart medicine, there could be patents protecting new technology for detecting irregular heartbeats and patents on the way a new medication functions to repair heart muscle and devices for treating those irregular heartbeats. The owner of a registered patent can stop an unauthorised person from producing a product that functions in the same way that the patented product functions.

If a person uses a trademark which is the same as or deceptively similar to your registered trademark, you may be able to take action to stop them. You need to be able to demonstrate that the trademark you want to stop is being used in the same or a closely related class in which your trademark is registered.

Some brand names like Coca-Cola, Microsoft and Netflix are so well known that they cannot be used by another person or company in any class of goods and services, including the classes that have nothing to do with what they are famous for.

For example, if a pet food company released ‘Nike Dog Biscuits’ there is a reasonable chance a member of the public could wrongly assume that the Nike athletic company had released a line of pet food. Nike could take action to stop the pet food company from using the word ‘Nike’ on any of its products.

Yes, you can. We encourage you to do so for the protection of your brand. It may even be possible to apply to register your trademark if it has already been registered by someone else. But you will need to provide evidence that shows you have been continuously using your trademark from a date that pre-dates the registration of the existing registered trademark. There are other strategies that can be employed to overcome issues. We can guide you.

As soon as you receive an IP Right Number then the process at IP Australia commences. The minimum amount of time an Australian Trade Mark Application takes (across the whole country) is about seven months.

Examination (3-4 months)

Publication for oppositions (2 months)

Registration (up to a month)

Now!

The best protection for your trademark is through registration. So, whether your trademark is one that you are going to use or one you are already using it’s best to apply for registration to give your valuable brand the best chance of protection. Don’t wait until someone else gets in before you.

Yes, you can. All you need to demonstrate is that you own and use, or own and intend to use, the trademark to be registered.

While you don’t need to start your business as soon as your trademark is registered you will need to demonstrate ‘use’ within three years of registration to maintain protection. Otherwise, another person or company could apply to have your trademark deregistered on the grounds you have not used it – called a “non-use application”.

‘Use’ is demonstrated through generating or attempting to generate revenue for a good or service in the class(es) in which you have registered your trademark. Just remember that things you do to set up your business like registering a business or domain name, having stationery printed or engaging a website developer are not considered ‘use’ that would protect you from a non-use application. You need to actually be offering your goods or services under or by reference to your trade mark.

The trademark registration process can take several months, so you might want to use your trademark while your application is still pending. However, be aware that trademark protection will not be available to you during this period.

Invent a word. Design a fresh logo. Be distinctive. A distinctive and original trademark that has little chance of being confused with another registered trademark has the highest chance of successful registration.

You could come up with a completely new word or abbreviate two words into one (but be careful of English language conjunctions – IP Australia are not keen on these). For example, LEGO was a derivation of the Danish word ‘leg godt’ which means ‘play well’.

Or you could come up with a word or phrase that is suggestive but not descriptive. WEET-BIX is suggestive of biscuits made of wheat. But WHEAT-BISCUITS would simply describe the relevant product. It would be too descriptive and most likely would not be able to be registered.

Or use a word out of context, like ‘CATERPILLAR’ for construction machinery.

Another strategy is to combine your ‘word’ with your ‘logo’ with the addition of a tagline. Sometimes the more elements your trademark contains the easier it is to register.

In the event your search pops up with another trademark which is the same as yours you may still apply for your trademark.

It may be that there are options to get around the initial barrier. If, for example, the other trademark has goods/services in unrelated classes then your trademark may be accepted by IP Australia straight away. If not, then there are often ways to overcome issues raised by IP Australia.

If you receive an Adverse Report from IP Australia, contact us and we can provide guidance on your options.

If you are trading overseas, it will be important for you to consider extending your Australian Trade Mark Application overseas.

This can be a complex process, but we can help you with this. Contact us and we can provide you with guidance.

Aussie Trademark has simplified the Australian Trademark Application process to THREE SIMPLE STEPS. You can use any device. Simply enter:

1. Your trademark.

2. Your goods/services.

3. The owner of your trademark.

That’s it!

Aussie Trademark offers:

- Free word trademark search of the IP Australia database which provides instant results.

- Free recommendations for available classes if your mark is already registered in other classes.

- Free 15 minute consultation with a trademark expert for all applicants.

- Free progress reporting each step of the way.

- 10 year protection for all registered marks.

If you require any general assistance or support, please do not hesitate to contact us at [email protected]. We are here to help and address any concerns or queries you may have. Applicants are entitled to direct access to our experts including a FREE 15 minute telephone consultation.