The first step to protecting your company’s trademark is to make a trademark application for registration. Most companies have their own distinct trademark, such as a name or a logo, by which consumers recognise their products and services. The best way to protect this mark from infringement is by applying for trademark registration.
Trademark Application Fast Facts:
- Differentiate – Your mark must distinguish your products or services.
- Unique – Your mark cannot be identical or confusingly similar to another company’s mark that is used or registered in related products and services. The most successful marks are the most unique.
- Avoid Overt Description – If your mark is overly descriptive of your products and services, your application will likely be unsuccessful.
- Searches – Conduct the appropriate searches to ensure that your mark is not identical or confusingly similar to a pre-existing mark.
- Classes – Ensure that you file your mark under the appropriate product or service classes.
- Examination – Your application will be examined, and once it is accepted and left unopposed, it will be registered into your ownership.
Trademark Application Requirements
Your company’s trademark must comply with some basic requirements before your trademark application can be registered. The first of these requirements is that your mark must distinguish your products and services from those of another company. In essence, your trademark application must be completely unique and identifiable as your own, and cannot be confusingly similar to a mark owned by another company to distinguish similar goods and services.
Similarly, it is difficult to register trademark application that is exceedingly descriptive of your types of products and services. Some of the most successful and recognisable trademarks are not related to the types of products and services they describe at all. For instance, consumers recognise ‘Apple’ as a company that sells reliable and innovative electronics, yet the word ‘Apple’ does not allude to the product type. However, if you were to to make a trademark application to register the name ‘Apple’ as the trademark for your fruit-selling business, you would likely be unsuccessful because the mark is overly descriptive of the nature of your business.
Trademark Application that May Not be Registered
Due to requirements such as these, not all trademark application can be registered: most marks experience complications during the registration process. Before you file your trademark application, you should conduct a trademark search to peruse common law marks and previously registered marks. A trademark search will reveal pre-existing marks that are the same or confusingly similar to your own. You would be potentially infringing on the rights of these trademark owners, whether their marks are registered or not, if you were to continue to use your similar mark. A trademark search is an ideal way to unearth conflicting trademarks. Trademark searches are a service that we can provide to you.
Complications can arise in the trademark application process when your mark is the same or deceptively similar to another registered mark. A registered trademark holder in the same or similar products and services can move to block your application in order to protect their own trademark rights. In cases like this, it is important that you have the guidance of a professional to navigate legalities: we can assist you in responding to an adverse Examiner’s Report. For further advice on preparing you trademark application, conducting a trademark search, or responding to registration blocks, please contact us.
After a trademark search has been conducted, you can be reasonably certain that your mark is not the same or confusingly similar to another trademark, and you can start filing your own trademark application. Your trademark must be filed in one or more specified products or service classes. It is important that you select these classes correctly to ensure the success of your trademark application. We can assist you in the selection of the relevant product or service classes as well as providing you with further information, should you require it.
Once you have filed your trademark application, it is examined and a subsequent report is issued. This report will indicate whether or not your mark can be registered. If you have filed your trademark application application correctly and conducted a thorough trademark search, your mark will be accepted and enter a period of opposition, during which a third party has the opportunity to oppose your mark’s registerability. If your mark is unopposed during this period, it will be successfully registered into your ownership.
Why Register Your Trademark?
Once you have successfully registered your trademark, you gain the exclusive rights to use your mark in relation to the products or services your company offers. The only way to obtain these rights is through trademark application registration with IP Australia.
When you register your mark, you eliminate the possibility of your marketplace competitors copying your unique business name and related symbols. In fact, your trademark application provides you with the ability to sue your competitors for damages caused by infringement. A successfully registered trademark grants you these exclusive rights in relation to that specific mark for a period of ten years, and then the registration can be renewed indefinitely.
The registered trademark symbol ® can only be used in respect of a registered trademark. It is actually against the law to use the ® symbol in relation to an unregistered mark. Your trademark is a valuable asset. To be prominent and recognisable within your marketplace, you must have a unique business name and trademark to go along with your goodwill. Your intellectual property must be protected. Once you own a registered trademark, you have the ability to prevent other traders from using an identical or confusingly similar mark.
Registered trademarks come with a number of benefits:
- The exclusive right to that mark indefinitely, with timely registration renewal.
- The singular right to prevent other traders from copying your mark or using a mark that is confusingly similar to your own.
- Your mark becomes a valuable asset that can be sold, assigned, or licensed to other parties.
- Your mark is a crucial connection between you, as the provider of specific products or services, and the consumer.
How Do You Register a Trademark?
In order to gain the rights of a registered trademark holder, you must file your application with IP Australia, in agreement with Australian trademark and intellectual property laws. The application’s success is based on the applicant’s intention to use the mark, or on the applicant’s previous use of the mark, within the marketplace.
- Registration with IP Australia is the only way to protect your mark against infringement.
- Once your trademark is registered, infringers cannot claim ignorance to defend unlawful use of your mark. As the registered trademark owner, you have the prima facie right to sue for infringement of your mark.
- Registration of your mark can also potentially prevent a third party from using your mark as a domain name.
- Only use the ® symbol in relation to registered trademarks. It is unlawful to use this symbol if your mark is unregistered.
- Registration grants you exclusive rights to protect your mark for ten years. During this time, you are entitled to receive statutory remedies such as damages, legal costs, and interest incurred during the protection of your mark against infringement.