FAQs: Trade Marks

What is a trade mark?

A trade mark is a sign that is used to distinguish the goods and services of one trader from another. A trade mark can be a letter, number, word, phrase, logo, graphic, sound, smell, shape or any combination of these things.   A trade mark registration does not protect the idea, innovation, design or process of a product, it ONLY protects the name/brand/identifying feature.

Why register a trade mark?

–          To prevent others from registering a similar trade mark

–          To prevent others from using your trade mark or something similar

–          To secure a powerful monopoly of your brand

–          Prevent infringement – a registered trade mark is a powerful deterrent

–          Adds value to your business – a registration is a tangible asset that can be sold, licensed or assigned to other parties.

–          Importantly it provides you the peace of mind to invest in to your brand/trade mark given you own the rights exclusively over all others in your industry.

I have registered my business/ company name, doesn’t that mean I own the trade mark?

NO.  Business or company name registration doesn’t not provide you with the proprietary rights over the name – only a trade mark registration affords you that right.  Your trading name registration will not prevent others from registering your trade marks – you must file for trade mark registration to prevent that from occurring.  If you do not file for registration of your trade mark, it is possible that another party will obtain registration of your brand or something similar, and should this occur you will have a legal battle over ownership which could have been avoided if you had filed your application for registration first.

What is NOT a registerable trade mark?

–          Words that other traders should freely be able to use in the normal course of trade, such as descriptive terms or common trade expressions that refer to your goods or services, i.e. the word “marketing pro” for marketing services or the term “denim” for clothing.

–          Common surnames

–          Geographic locations

–          Common colloquialisms and references to quality

It is always worth obtaining our advice as to whether or not your brand is capable of distinguishing

What is the general trade mark registration process with Raven IP?

 

  1. Initial consultation, where we identify your trade marks, countries required for protection, the goods and services in which your trade mark must be protected for, and provide you with our filing recommendations and quotation.
  2. Trade Mark Search (optional but highly recommended) – is your trade mark available for use and registration? It is worth knowing this before investing in the application.
  3. Preparation of your application – we draft your trade mark application with the aim of securing the broadest and strongest possible protection in the relevant goods and service classes.  We provide you with all of the filing details for your approval prior to lodgement
  4. We file your application with the Trade Mark Office on your behalf, managing the entire registration process for you – whilst keeping you informed every step of the way.
  5. Expedition – it is possible to request early examination of your application should you have viable reasons (ie. Fear of infringement or impending launch).  This enables examination of your trade mark within 2 – 4 weeks as opposed to waiting the standard 4 – 5 months.  Therefore the registration process is significantly reduced.
  6. Examination – once your trade mark is examined we will either notify you of acceptance, or of the issues raised by the examiner as to why the application can not be accepted. We will work with you to ensure acceptance as soon as possible should this occur.
  7. Acceptance – once your trade mark is accepted, it will enter the opposition period (in Australia it is 2 months), whereby a third party can put forward reasoning as to why your trade mark should not be granted.   If there is an opposition filed, we will work with you to defend your rights.
  8. Registration – Raven IP will ensure registration of your trade mark and will monitor and manage the registration for you for the registration term (usually 10 years in most countries).  As your address for service, you can contact us at any time to discuss your trade mark rights.

How long does the trade mark process take?

In Australia, the registration process will take at least 8 months. In New Zealand, registration can be achieved within 5 months. The USA generally 9 – 12 months…it varies for each country, but for example in China it can take at least 2 years for examination to occur! So it is best to talk to our team to ensure the best filing strategy based on your export plans.

Can I obtain world wide trade mark rights?

Yes. You can file your trade mark in most countries all over the world, with many registration rules being similar to that of Australian trade mark practice. Raven IP can certainly assist you in this regard. However you will need a substantial budget to do so. Unfortunately you cannot lodge one trade mark and achieve ‘world wide rights’. You must file individually in to each country (or via one of the multi-country systems such as the Madrid Protocol or CTM) see our International Registration page for more detail.

 

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