Register a Trade Mark for Your iPhone App
Once you have developed an app, it is worth considering how you might protect its identifiable features through trade marks. Trade marks are a sign used by individuals to distinguish their goods or services during the course of trade. Trade mark owners have the exclusive right to use, licence and sell their mark, meaning trade mark owners have the power to prevent others from using an identical or similar mark when selling similar goods or services. This article outlines the general steps you can take to trade mark your iPhone app.
1. Decide What You Want to Register
Before you apply for a registered trade mark with IP Australia, you should consider what features of your iPhone app you can register. Trade marks can protect a wide range of features on your app, including its:
- slogan used to promote the app; and
- specific names of certain features in the app.
For example, Instagram LLC has a trade mark for the name ‘Instagram’, as well as its multicoloured camera logo and its other features such as the names of its video platforms on ‘IGTV’ and ‘Reels’.
Unlike patents and copyright, trade marks cannot protect the way your app functions in terms of its software and coding, nor its creative features. Rather, trade marks protect the features of your brand which distinguish your app from others in the marketplace.
2. Conduct a Trade Mark Search
Once you have identified the features of your app you want to register, you should conduct a trade mark search. When you search the Australian Trade Mark Search, you should look out for any trade marks that are similar or identical to the mark you intend to register. Whilst the features of your app may be unique and unlike any other app on the market, others may have already registered some of its features.
You cannot register a substantially identical or deceptively similar trade mark to a previously registered trade mark concerning the same class of goods. For example, if you register the name of your communication app ‘face time’, this would likely infringe on Apple Inc. ‘s trade mark ‘FaceTime’. Other trade mark owners may oppose your application if they feel your trade mark is too similar to their own. IP Australia could also reject it on the basis that it would likely infringe on the owner’s trade mark rights.
To avoid this, conducting a trade mark search will increase your chances of choosing a trade mark that meets the standards of uniqueness that IP Australia requires for registration. It will also ensure that you avoid applying for a trade mark that is identical to an already registered trade mark.
3. Class of Goods or Services
Since registered trade marks protect certain goods or services, you must specify in your application which of these goods or services you intend your trade mark to protect. On the Trade Mark Registry, goods and services fall under certain classes or categories. There are 45 classes of trade marks, and many goods and services fall under various classes. For example, ‘computer software’ falls under five different classes of trade marks.
You must include all the relevant classes in your initial application. This is because once you submit your application, you can only remove certain classes rather than add additional classes. Adding additional classes will require a wholly new trade mark application to be submitted to IP Australia. To avoid the further costs and time spent submitting a new trade mark application, you should thoroughly search the Trade Mark Classification Search to ensure that you have included all the relevant classes in your application.
4. Application Process
As mentioned earlier, you must apply with IP Australia to receive a registered trade mark. IP Australia will review your application then determine whether your trade mark should be accepted or rejected.
There are two main methods for applying for a registered trade mark. These are:
- standard application; or
- TM Headstart application.
A standard application will generally require:
- your personal information;
- a description of the app that you intend your trade mark to protect;
- the type of trade mark you are applying for; and
- the class of goods or services that your trade mark will protect.
On the other hand, a TM Headstart application allows applicants to have their application assessed by an expert examiner at IP Australia before formally filing for registration. A TM Headstart application is useful since the examiner can identify any potential problems that may arise in your application and allow you to make changes to your application before you formally register your trade mark.
Although both applications lead to IP Australia reviewing your finalised application, you can think of a TM Headstart application as adding an extra step to the standard application.
5. International Trade Mark Registration
Applying for a registered trade mark with IP Australia will only protect your trade mark within Australia’s borders. If you intend your iPhone app for worldwide use, you should consider a trade mark for your app in different countries. It is possible to register your trade mark:
- in a particular country through its specific registration processes, such as America’s Trade Mark and Patent’s Office; or
- with the World Intellectual Property Organisation (WIPO) to protect your trade mark in countries that are members of the Madrid Protocol.
However, international trade mark registration can quickly become a complex and costly process. Therefore, it would be wise to consult a trade mark lawyer to determine when you should consider international registration.
Registering a trade mark for certain features of your app will allow you to protect its distinctive brand. Once you decide what to register as a trade mark, you should:
- conduct a trade mark search to ensure that the trade mark you have in mind is not already registered;
- ensure that you identify the relevant class of goods or services you wish your trade mark to protect;
- file an application with IP Australia; and
- consider international registration.
Frequently Asked Questions
From their filing date, a registered trade mark is protected for 10 years. You can renew trade mark applications 12 months before their expiry date.
The reserved symbol is exclusively used for registered trade marks, whereas you can use the trade mark symbol for unregistered trade marks or trade marks in the process of being registered.