A trade mark may be a word, phrase, device, packaging get-up, product shape, combinations of these, or indeed, almost any aspect of branding that serves to differentiate your products and services from those of your competitors. A well chosen trade mark:
distinguishes your products or services from others in the marketplace
is a memorable symbol for the quality of your products and services
It is important to choose a good trade mark, one that is registrable and confers strong rights.
Good trade marks are distinctive of your products and/or services and therefore registrable, including invented words such as "KODAK" and "XEROX" and arbitrary words such as "APPLE" for computers or "SINGER" for sewing machines.
Equally good are trade marks which have a positive connotation or convey information about the products in a suggestive way, but do not describe the products, for example "DURACELL" for batteries, "MICROSOFT" for computers or "CYCLONE" for fencing.
Weak trade marks which feature descriptive or generic words such as "NO FRILLS", "CLASSIC" or "LITE" are hard to register and provide limited prospect of preventing competitors using the same trade mark.
It is important to choose a trade mark that is registerable and confers strong rights.
Prior to adopting a new trade mark it is prudent to conduct searches of the Trade Marks Office records and marketplace at the earliest opportunity and before a trade mark is adopted or any significant costs are incurred for obtaining registration, or preparation of artwork, packaging or advertising campaigns. A search will reveal if the use is likely to infringe a prior registered trade mark, conflict with a trade mark that is in use, and indicate the prospects for obtaining registration.
Prior to adopting a trade mark, or filing an application for registration, it is prudent to conduct a search of the Australian Trade Marks Office database to:
ensure use of the mark will not infringe any prior trade mark
to assess the prospects for registration
Additional searches for common law trade marks (trade marks which are in use but may not be registered) including searches of telephone directory listings, domain names, company and business names, internet searches and searches of industry publications and databases, should be undertaken to ensure there are no competing common law trade mark rights which may conflict with use and registration of your trade mark.
Our trade marks team is available to advise on appropriate search strategies in Australia and overseas, and provide an estimate of costs. Our search reports will give you a detailed analysis of the findings and options for resolving any potential conflicts.
Full name and street address of the applicant including incorporation details if the applicant is a company
Statement of goods and/or services for which registration is to be sought
If convention priority is to be claimed, details of the priority application are needed
If the trade mark contains a device, a clear black and white or colour representation is needed
If the trade mark contains or consists of a three dimensional shape:
the trade mark should be illustrated in a perspective that shows each feature of the mark
the representation must include views of the trade mark that are necessary to show each feature of the trade mark
An English translation of any words included in the trade mark of a language other than English will be needed before acceptance, as will a transliteration in Roman letters of any non Roman characters together with a translation of the words into English. Providing this information at filing may avoid issue of an examination report and associated costs
If the trade mark contains or consists of a colour, scent, shape, sound or an aspect of packaging, or any combination of those features, a concise and accurate description of the features of the trade mark is needed
Multi-class applications are permitted in Australia
The Nice International Classification is followed
No notarisation or legislation of documents is necessary
No certified copy of the priority document/application is required
No Power of Attorney or Authorisation of Agent is required
It is possible to file applications overseas using a number of systems and it is a matter of deciding, in each case, which system is preferable. The disbursements, including the official fees and overseas associates charges where applicable, vary from country to country and depending on the registration system used. The three systems are:
1 International registration under the Madrid Protocol system - This is an "international registration" allowing the filing of a single application designating the country or countries of interest. The costs vary depending on the countries nominated. There are over 90 countries in the Madrid Protocol system and we can provide a list of current member countries on request. The whole of the EU can be designated as a single region.
To file an international application you must have either a trade mark registration or a pending application in Australia or New Zealand. The international filing undergoes preliminary examination for formalities at the central office called the International Bureau in Geneva and then undergoes examination based on the law of each designated country.
The benefits of filing using the Madrid Protocol system are:
It is generally a less expensive option compared to filing national applications
It is possible to designate additional members of the Madrid Protocol at a later time if your markets expand
Administrative matters, including renewal, change of name or address and change of ownership are simpler and therefore less costly
There are no registration fees payable once the application has been accepted and advertised (except for Japan). However additional costs will be incurred if the application encounters official objection or opposition in any designated country.
2 European Community Trade Mark The CTM regime is a single application covering all member countries of the EU. This is a valuable mechanism for European trade mark protection but is less cost effective than filing a Madrid Protocol application designating the EU.
3 National applications An application may be filed directly in the country of interest, and the costs vary from country to country. For those countries that are not members of the Madrid Protocol or are not part of the EU, such as Canada, South Africa, some Asian countries, and the South American countries, national registration is the only option currently available.
A CTM registration or an EU designation covers all 28 countries of the European Community and any countries which are subsequently added to the EU community. European Union countries are currently Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom ("the Community").
Use of a trade mark in any one member country will satisfy the use requirements of a CTM registration or EU designation for the entire Community
Multiclass applications are possible
The basic fee for a CTM application covers up to three classes, with extra fees payable for additional classes.
The CTM registration and EU designation is an "all or nothing" system. If there are conflicting trade mark rights in any of the member countries or if any individual or company in the European Community successfully opposes registration a community trade mark application and its opposition is successful, then the CTM or the EU designation fails. However, it is possible to convert to separate national applications from the CTM or EU designation.
The EU designation in a Madrid Protocol registration or a CTM offers an excellent opportunity to obtain European Community coverage for substantial reduction in costs at both registration and renewal stages.
Your trade mark advisors can provide valuable assistance at the time of choosing a new mark, will provide strategic advice for searching and filing, and will simplify the registration process for you. Expert assistance provides peace of mind. Our trade mark group is available to provide a full trade mark portfolio management service including:
advice on brand creation and trade mark filing strategies
trade mark clearance searches to determine the availability of trade marks for use and registration
filing, prosecution and registration of trade marks
filing, prosecution and registration of foreign trade marks (using our network of overseas associates) and International Registrations using the Madrid Protocol system
trade mark opposition, non-use and revocation proceedings
Mary is a Senior Associate and Practice Manager of the Perth office. Her practice is broadly based and extends across several chemistry, chemical engineering and process engineering fields including mineral processing and mining technologies, oil and gas technologies, water treatment, waste management, foodtech and agribusiness.
Mary has extensive experience in drafting, prosecution and opposition proceedings and she regularly provides strategic IP advice to management and board members, IP portfolio management, due diligence, freedom to operate opinions. She is also a panel member of the City of Joondalup Innovation Fund Advisory Panel.