What is a Trade Mark?
A trade mark is a sign used by a trader to distinguish their goods or services from those of other traders.
Trade marks can take many forms including:
- words, phrases or slogans
- acronyms or numbers
- logos or designs
- other non-traditional formats, such as sounds, scents, colours, shapes, animations and movement
- a combination of any of the above
Trade mark registration is a legally-recognised way to protect your business‘ brand and the brands used for your goods or services.
It's important to remember that a registered trade mark is not the same as a registered business name, company name or domain name. You can read more about the differences between business names and trade marks here.
Frequently Asked Questions
Some of the common questions about trade marks are answered below.
What is an unregsitered trade mark?
An unregistered trade mark is a trade mark that is used in business, but not registered on the official trade marks register.
Examples of unregistered trade marks might include:
- company names, business names and domain names
- names of products or services
- logos, packaging and artwork
Unregistered trade marks do not enjoy the same legal protections and rights as registered trade marks.
The ability to protect an unregistered trade mark relies heavily on the business being able to establish that they have a reputation, notoriety or goodwill in the unregistered trade mark. This can be expensive and difficult to prove in court.
What is a registered trade mark?
Registered trade marks are those which have been registered on the official trade marks register.
The trade marks register in Australia is administered by IP Australia.
Other jurisdictions have trade marks offices that grant trade mark registrations according to their local legislation and regulations.
Trade Mark registration confers statutory protections and rights, including:
- legal ownership of the registered trade mark
- the ability to license or sell the trade mark to others
- the right to prevent others from infringing the trade mark
- the ability to use the ® symbol with the trade mark in the jurisdictions where registration has been granted.
Compared with an unregistered trade mark, it can be easier and cheaper to prove that a trade mark has been infringed. This is because the trade mark rights are established by registration, and the owner does not have to prove any established reputation or goodwill in the registered trade mark.
What is the trade mark registration process in Australia?
An application for registration of a trade mark in Australia is managed by IP Australia.
To obtain registration, the application must pass through a number of stages:
- Preparation - the application is planned and prepared for lodgement
- Lodgement - the application is formally submitted to IP Australia for consideration
- Examination - a trade marks examiner assesses the application and raises any problems
- Advertising / Opposition - once examination is passed the application is advertised to allow third-parties to oppose registration
- Registration - when the application has passed all previous stages, a Certificate of Registration is issued. The owner can renew the registration every 10 years.
Find out more details about the Application process in Australia.
How long does it take to register a trade mark in Australia?
The earliest a trade mark application can reach Registration in Australia is approximately 7½ months after the date the application is lodged.
The process will take longer if your application encounters a hurdle, such as an Adverse Examination Report or Opposition.
Find out more details about the Application process in Australia.
How much does it cost to register a trade mark?
The cost to register a trade mark application depends on a few factors:
- How many trade marks are being protected (in other words: How many applications do you need?)
— Applying to register a logo and the plain-text words counts as two trade marks
- The number of classes of protection
— Trade marks are protected for specific goods and services, which are grouped into "classes" (There are 45 different classes of goods and services). The more classes, the higher the application fee will be.
- The method of filing the application
— There are a few different methods to file an application, and the filing fee will differ. Each method has its own pro's and con's and the cheapest is not always the best.
- Whether your application encounters any hurdles, such as Adverse Examination Reports or Oppositions
For more information about IP Australia fees, please see our Trade Mark Fee Guide.
Can I file my own trade mark application?
In short — yes, it is possible to do it yourself.
But with anything, there are trips, traps, technicalities, deadlines and pitfalls to watch out for.
While it can seem cheap and easy to file a trade mark application yourself, trade mark law and the application process can be complicated and technical — especially if something goes wrong.
Many 'DIY' applications are unsuccessful (or require expensive amendments or re-filing) due to issues, mistakes and filing errors that could have been foreseen or avoided from the beginning.
Without good advice and planning, you could end up with a trade mark that does not adequately protect your business.
Or worse — you could be infringing upon another business' trade mark rights.
In the long run, it can pay off to seek professional advice and assistance to prepare, file and manage your application.
Your trade mark protects your business identity, so it is worth the investment!
How long does a trade mark last?
Trade marks are initially registered for a period of 10 years, effective from the filing date of the application. However, a trade mark can be renewed indefinitely.
To maintain the trade mark, a renewal fee must be paid at each 10-year anniversary.
Trade mark owners should also take care to ensure they actively use the trade mark to reduce the risk of it being removed for Non-Use.
International Trade Marks
If you intend to use your trade mark overseas, it‘s important to consider international trade mark registrations.
There is no such thing as a "global" trade mark, so the relevant territories or countries need to be identified.
There are 2 main methods to apply for international trade mark registration:
- Madrid Protocol - an international system for registration in over 100 countries and territories
- filing a direct application in the relevant country or territory
The best method will depend on a number of factors, including cost, whether there is an underlying Australian trade mark application and the number of countries or territories in which protection is needed.
The international registration process typically takes longer than Australia. While many territories follow a similar process to Australia, the speed and strictness of the application process can vary considerably between each territory.
How we can assist
Xuveo Legal provides advice and assistance in all areas of trade mark protection.
Whether you are planning a rebrand, launching a new brand or maintaining your existing brand, we can help you protect it through trade mark registration.
If you discover third party infringement of your trade mark, we can help you take action to protect your rights.
We can assist with:
- trade mark strategy and advice
- pre-application searches
- applications for registration in Australia & New Zealand
- international applications under the Madrid Protocol and via in-country agents
- opposition to registration
- non-use removal actions
- renewal of registration
- trade mark enforcement and disputes
Find more posts on our Blog page.
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