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ARTICLE Business TipsJune 17, 2014

Intellectual property series, part 2: Registering a trademark

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Your business’s brand is valuable property and, just like your home or office, it should be properly secured and protected. Here we answer four questions about how to legally register a business trademark, including a logo, in Australia.

You’ve invested a lot of time and effort in starting your own business, so it’s well worth securing and protecting its unique identity. One of the ways you can safeguard your brand is by legally registering a trademark with IP Australia.

A business, company or domain name doesn’t give you any propriety rights – only a registered trademark can provide that kind of protection. Having a registered trademark in place is particularly important if you plan to sell or license your business in the future.

What is a trademark?

A trademark is a way of identifying a unique product or service. Essentially, it is your company’s identity, which can be your most valuable marketing tool.

A trademark can include, but is not limited to, your logo. “If you do not register your trademark, another trader could register your brand as a trademark and you could be forced to defend your rights. You may even be required to rebrand,” says Celia Poole, General Manager of Trademarks at IP Australia. “Protecting a trademark should be an element of your branding strategy,” she adds.

By registering a trademark, you have the legal right to use, license or sell it within Australia. You also have the right to prevent others from using it.

How do I register a business name or trademark?

Did you know?

Registering your business name, which is separate from registering your trademark, costs $76 for three years.

Registering your business name, which is separate from registering your trademark, is an easy online process through the Australian Securities and Investments Commission (ASIC). Business names can be registered for one year for $34 or for three years for $78. 

Similarly, registering a trademark is relatively simple and is well worth considering when you start a new business or release a new product to market.

To register a trademark, you will need to complete an application with IP Australia. This includes details of the goods or services that you wish to be covered, as well as a representation of your trademark, such as a picture of your logo. Importantly, you need to ensure your application is filed in a name that has legal personality – this means in your own personal name or the name of a company, not a business name. The process takes about 10 minutes if you’ve prepared the information in advance.

IP Australia also has an online pre-application service called TM Headstart, which is aimed at making the application process easier. With TM Headstart, within five days of completing the pre-application, you’ll receive an assessment of whether your proposed trademark is eligible for registration. “The service will assist you in quickly identifying any potential barriers that could prevent your proposed trademark from being registered,” says Poole.

You may wish to engage the services of a trademark lawyer to assist with your application, however, it is not essential. A database of pending and registered trademarks is available to search at the IP Australia website. If you plan to use your trademark, logo and business name together, you can register one composite trademark, such as a word or slogan along with a logo.

All trademark applications are examined and an opposition process allows anyone to challenge your registration. Examination occurs about six weeks after filing your application and the process takes about eight months.

What does a trademark cost?

Trademark registration costs vary, depending on the breadth of protection you are seeking. Trademark applications cost from $120 and registration fees start from $300. The cost for IP Australia’s TM Headstart service begins at $120.

Trademark registration lasts for 10 years from the date of application. You can continue to renew the trademark for successive periods of 10 years by paying a renewal fee (currently from $300) before the term of registration expires.

You are required to use trademarks once they are registered, or risk having them removed. “You must actively use your trademark during the period of registration to avoid its removal on the grounds of non-use,” says Poole.

Are there restrictions on trademarks?

A trademark can be a letter, number, word, phrase, sound, smell, shape, logo, picture or any combination of these.

There is, however, a range of restrictions when it comes to registering these elements. “The two key tests applied are whether the mark is similar to a prior pending or registered mark, and whether the mark is likely to be needed by other traders in the ordinary course of business,” explains Poole.

Apple, for example, was successful in its application to trademark the term “apple” because it is not a common term that other traders use to describe their software or an aspect of their computers. The same could not be said if Apple was trying to register the term ‘apple’ for fruit, as other fruit sellers need to describe apples as apples.

The process of registering your trademark is relatively straightforward and the cost of doing so is not prohibitive – what you potentially stand to lose if you don’t take these basic steps is much greater.

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