I am Applying for a Trade Mark. What Should I Know?
Although the process of applying for a registered trade mark is relatively straightforward, it is easy to make mistakes during the application process, which can lead to further costs. This article outlines five points you should consider when applying for a trade mark yourself.
1. Are Trade Marks Right for You?
Before trade mark registration, you should consider whether it is the right form of intellectual property protection you require. Trade marks protect the features of a brand that make it distinguishable, such as a business:
- logo; and
- slogan or catchphrase.
A trade mark owner has the right to use, licence and sell their registered trade to the exclusion of all other people. This means that the features of your business brand, which a trade mark protects, cannot be used by any other person in connection with similar goods and services sold by your business unless you consent to them doing so. In this instance, where someone uses an identical or similar mark to your registered trade mark in connection with similar goods or services, you can prevent the person from committing trade mark infringement by enforcing your intellectual property rights.
However, trade marks do not protect original creative works, such as artistic creations or literary works. Nor do trade marks protect innovative methods, such as the function of a computer program. Instead, copyright and patents can protect creative works and innovative methods, respectively. For this reason, you should identify what material you seek to protect and determine whether trade marks are adequate to protect this material.
2. Conduct a Trade Mark Search
You should conduct a trade mark search before trade mark registration. This is so that you can avoid applying for a trade mark that is already registered. You should ensure that nobody has an identical trade mark concerning a class of goods or services similar to your intended trade mark. Conducting a trade mark search is as simple as entering keywords into the Australian Trade Mark Search. You can refine your search results by:
- conducting an advanced search to target certain words;
- uploading an image of your intended logo; or
- entering the specific details of a particular business or trade mark number that you have in mind.
You should note that it is possible to have two similar trade marks registered in two non-competing industries if it is unlikely to deceive consumers. For example, the name of a restaurant in Sydney may coexist with the name of a bookstore in Perth. Whether a trade mark application is accepted or not ultimately depends on IP Australia’s approval.
3. Selecting the Correct Classes
Trade marks are also registered in connection to certain classes of goods or services. When you apply for a trade mark, you must include all the classes of goods or services that your potential trade mark will protect. This is because once you file your application with IP Australia, you can only remove classes instead of adding additional classes. If you wish to add additional classes to your application, you will likely have to reapply to IP Australia with a wholly new trade mark application.
You should note that most goods and services fall under numerous classes. For example, the term ‘food’ falls under 24 different classes in the picklist. For this reason, you should take the time to select the correct classes before filing your application to ensure that your trade mark is adequate to protect your goods or services.
4. Different Applications
When applying for a trade mark with IP Australia, you have different application options, the most common being a:
- standard application; or
- TM Headstart application.
Both applications are reviewed and either accepted or rejected by IP Australia. However, a TM Headstart application provides extra services that a standard application does not. A TM Headstart application provides applicants with an expert examination of their potential trade mark before formally filing it with IP Australia. Not only can the expert identify any potential errors in your application, but this also allows you to make amendments to your application. In this sense, you can think of a TM Headstart application as adding a step before you formally file your application with IP Australia.
When applying for a trade mark, you should also be aware of the costs involved in the process. A new TM Headstart application cost is $200 per class of goods and services included in your application. On the other hand, the cost for a standard trade mark application using the picklist is $250 per class of goods and services included in your application. You can find a more comprehensive list of IP Australia’s cost breakdowns here.
When applying for a registered trade mark with IP Australia, you should consider:
- whether trade marks are capable of protecting your material;
- conducting a trade mark search to ensure that your proposed trade mark is not already registered;
- picking the correct class of goods or services that your trade mark will protect;
- applying using a standard application or a TM Headstart application; and
- the different costs involved with each application.
Frequently Asked Questions
Under the Trade Marks Act, IP Australia protects registered trade marks for 10 years from their filing date.
Although the answer will vary depending on your business, you should apply for trade marks earlier rather than later to protect your brand from the outset.