Trade Mark FAQs

Your trade marks encompass your business name, product names, and any elements you identify as part of your brand. This includes the logos you use to advertise, promote, and sell your products. Trade marks are how customers recognise and recommend your business. They represent your business’s values and play a key role in building customer loyalty, ensuring that when customers seek your products, they know they’re choosing the quality and identity associated with your trade mark.

To own a trade mark you need to apply to register it. Applications for trade mark registration are now done electronically through the IP Australia website. However, before you apply to register your brand as a trade mark you will need to identify what your trade mark is and the good and/or services that you will seek to register it for.

These might sound like simple tasks; however, there are a number of matters that you need to consider to ensure that your resulting trade mark registration is fit for purpose and to make the application process as streamlined as possible. The experts at IP Solved can carefully guide you through this process.

For every business, the key question is: Do you truly own your trade marks? 

If you haven’t registered your trade mark with IP Australia, the answer is “No.” 

Registering your trade marks with IP Australia is the only way to officially and securely own them. 

Some businesses assume that registering their business name, company name, or domain name is enough to prove ownership. However, these registrations don’t give you the legal right to stop others from using a similar name or brand for similar products. Only a registered trade mark provides that protection and ownership.

To get your trade marks registered, you need to apply for registration at IP Australia, the Australian government body that administers the Trade Marks Act 1995 (Cth) and maintains the Trade Marks Register.

At IP Solved, we specialise in trade mark registration to get your brands registered and protected.

A trade mark registration in Australia will only establish your business’s rights in that trade mark in Australia. It cannot be used to prevent the use of the same or similar trade mark in any other country. To obtain trade mark rights in other countries it is necessary to apply to register your brand as a trade mark in those countries via the Trade Mark Office in each country.

A "shot-gun" approach to trade mark registration overseas where you simply register in as many countries as possible will often be unnecessary and will be extremely expensive. Accordingly, it is best to register your trade mark in those countries that you have a current or foreseeable interest in trading in. 

Once the Trade Marks Office (IP Australia) has approved a trade mark for registration it will advertise it in the Official Journal of Trade Marks. Any person can oppose the registration of that trade mark by filing a Notice of Intention to Oppose. Such Notice must be filed within two (2) months of the date on which it was advertised in the Official Journal.

If no Notices are filed, the trade mark will proceed to registration upon payment of the registration fees. Once the trade mark is registered, opposition to it cannot be lodged with the Trade Marks Office, except in certain limited circumstances. If a party wishes to oppose the registration of a trade mark after it has proceeded to registration, they will need to do so by application to the Federal Court, which will be very costly.

When IP Australia accepts a trade mark application, there’s a two-month window where others, like competitors, can oppose it. 

To oppose your trade mark, they must have strong reasons. For example, they might claim that they are the rightful owner of the trade mark, or that your trade mark is too similar to theirs, which could confuse customers because of their existing reputation.

You can only use the ® symbol once your trade mark is officially registered. If your trade mark isn’t registered, you’re not required to use a symbol, but we highly recommend using the ™ symbol. This shows the public that you claim ownership of the trade mark for your goods or services. It can also help strengthen your position if you need to take action against someone copying your brand.

Sometimes a trade mark may go unused for a period of time or may not have been initially applied for with the intention that the applicant would actually use it in good faith. In such instances, action can be taken at the Trade Marks Office (instead of the Federal Court) to have a trade mark registration removed from the trade marks register.  This is referred to as a Non-use Action.

A successful non-use action will result in the trade mark registration being struck from the trade marks register, possibly leaving the registered owner without any rights in the trade mark.

Registered trade marks need to be renewed every ten (10) years from the date on which they were original filed. The effect of renewing your registered trade mark is that it will remain in force for another ten (10) years.

Ten years is a long time in business, and we find that many trade marks that are coming up for renewal need a good dust off and revisit, so we do not simply seek renewal of a trade mark without first confirming that the registration is still fit for purpose.

Call us today to renew your registered trade marks.

Registration of a trade mark gives its owner the right to take legal action against someone else who is using the same or similar trade mark in relation to the same or similar goods as those for which the trade mark is registered. Apart from conferring “ownership” of a trade mark on the registered owner, this is the main purpose and characteristic of a trade mark registration.

However, it is for the owner of a trade mark to “police” its trade mark rights and threaten legal action and where necessary take legal action to prevent someone else using a conflicting trade mark. The Trade Marks Office (IP Australia) will not do this for you, nor will they take action to prevent any infringements of your trade mark, once they come to light.

This cost will vary depending on the type of Trade mark and how many classes you need to register in, as well as how many countries you wish to register in for protection. IP Solved will guide you to ensure the correct protections are put in place for your business, while offering cost-effective and transparent pricing throughout the application process.

If you're a small or medium-sized business owner looking to protect your brand internationally, the Madrid Protocol System can make the process easier and more cost-effective. Here's what you need to know:

What is the Office of Origin?

The Office of Origin is the IP Office that handles your initial trade mark application. For example, if you're in Australia, IP Australia would be your Office of Origin. They help you start the process of applying for an international trade mark.

Why File an International Trade Mark Application?

There are several benefits to filing an international trade mark application:

·         Convenience: You can cover up to 126 countries with just one application.

·         Cost Savings: You pay one set of fees.

·         Simplicity: The application is filed in one language.

·         Centralised Management: Any changes to your trade mark details, like ownership changes, are handled centrally through WIPO (World Intellectual Property Organization) with one fee.

·         Flexibility: You can add more countries to your trade mark protection later.

·         Easy Renewal: You pay one renewal fee for all the countries covered.

How to File an International Trade Mark application

You file your international trade mark application with your Office of Origin, such as IP Australia if you're in Australia. To be eligible, you must be an Australian national, resident, or have a business in Australia.

Ownership and Dependency

The owner of the international application must be the same as the owner of the basic application. Your international trade mark depends on your basic trade mark for five years. If your basic trade mark is abandoned or cancelled within this period, your international trade mark will also be affected.

Filing Requirements in Australia

In Australia, you file through IP Australia's Online Services portal. You'll need to provide:

·         Your details

·         Proof of entitlement

·         Agent details (if applicable)

·         Basic trade mark details

·         Priority details (if any)

·         A representation of the mark

·         Any claimed colours or special indications

·         Classes and goods/services

·         Designated countries

Adding Goods and Services

You can only include goods and services that are the same or narrower than those in your basic trade mark. You can't add new goods or services.

Selecting Countries

When you file, you choose the countries where you want protection. You can add more countries later through a "subsequent designation."

Certification by the Office of Origin

Your Office of Origin certifies the date they received your application and ensures that the details match your basic trade mark. They must forward your application to the International Bureau (IB) within two months.

Stages of an International Trade Mark

The process involves three main stages:

1.      Filing the application.

2.      Formal examination by WIPO.

3.      Substantive examination by the national or regional IP offices.

Fees and Forms

Using the WIPO fee calculator, the fee for filing an international trade mark with four classes and designating China, the European Union, and the US is CHF 4,397.00 as of April 7, 2022. The US requires a Form MM18 (Intention to use).

Roles of Various Offices

·         Office of Origin: Certifies and forwards your application.

·         International Bureau (IB): Checks your application for classification and formalities, and publishes it.

·         National or Regional IP Offices: Examine your application and make decisions within 12 to 18 months.

Provisional Refusals and Subsequent Designations

If some goods or services are refused, you can remove them to proceed with registration. You can also add more countries later through a subsequent designation.

Continued Processing

If you miss a deadline, you can request continued processing by submitting a Form MM20 to WIPO within two months.

Using a registered trade mark (TM) attorney to lodge a Madrid Protocol application can offer several benefits, especially for small to medium-sized business owners who may not be familiar with the complexities of international trade mark registration. Here are some reasons why it is advantageous:

1.      Expertise and Knowledge: Registered TM attorneys have specialized knowledge and experience in trade mark law and the Madrid Protocol System. They can provide valuable guidance on the application process, ensuring that all requirements are met and that the application is correctly filed.

2.      Avoiding Mistakes: The international trade mark application process can be complex and involves various legal and procedural requirements. A registered TM attorney can help avoid common mistakes that could lead to delays or refusals, such as incorrect classifications or incomplete information.

3.      Strategic Advice: TM attorneys can offer strategic advice on how to best protect your brand internationally. They can help you decide which countries to designate in your application based on your business goals and market presence.

4.      Handling Objections and Refusals: If any objections or refusals arise during the examination process by WIPO or the national/regional IP offices, a TM attorney can represent you and handle the responses, increasing the chances of a successful outcome.

5.      Time and Resource Management: Managing an international trade mark application can be time-consuming. A TM attorney can handle the administrative tasks, allowing you to focus on your core business activities.

6.      Centralised Management: TM attorneys can manage all aspects of your trade mark portfolio, including renewals, assignments, and changes to registration details, ensuring that your trade marks remain protected and up-to-date.

Overall, using a registered TM attorney can provide peace of mind and increase the likelihood of a smooth and successful international trade mark registration process under the Madrid Protocol System. Reach out to our team of experts at IP Solved today!