Australian trade marks are valid for up to 10 years from the date of filing. As one of the most important pieces of intellectual property you can own, it’s only natural to wonder how long your trade mark protection will last. Each trade mark represents a significant investment in development, goodwill and customer recognition, but it’s not a set-and-forget process.

The good news is Australia’s trade mark system provides robust protection that allows you to prevent others from using your branding without permission. The key is understanding how the system works and managing your registration properly.

This guide explains how long trade marks last in Australia, how renewals work, and what you need to do to keep your protection in place.

What is a Trade Mark?

A trade mark is a type of intellectual property that distinguishes your business from everyone else. It can include: 

• Logos
• Words
• Phrases
• Colours 
• Sounds 
• Smells 
• Pictures
• Aspects of packaging 
• Any combination of the above. 

Trade marks in Australia are registered by IP Australia. Each trade mark is registered in regard to specific products and services. This grants you the exclusive right to use or licence your trade mark over those products or services. You also gain the right to take legal action against others that are using your trade mark – or a trade mark that is “deceptively similar” in relation to the same or similar products or services – without permission.

Australian trade marks only provide protection within Australia. You will need to register your trade mark separately in other countries, with each jurisdiction carrying its own application and renewal requirements.

How Long Do Trade Marks Last For?

Australian trade marks are valid for up to 10 years from the date of filing. 

This 10-year period begins from the filing date, not the registration date. That distinction is important because the registration process can take several months. Your protection clock starts ticking from the day you submit your application. 

Trade marks can be renewed at the end of the 10-year period, and there is no limit on the number of times a trade mark can be renewed. You can renew your trade marks up to 1 year before the expiry date. If you miss the expiry date, your IP can still be renewed within the 6-month grace period. Late renewals incur an additional fee of $100 for each month, or part of a month, the payment is late.

If you do not renew your trade mark, the registration will lapse, and third parties may be able to register it as their own.

Given the significant value of trade marks, most companies choose to work with IP attorneys to keep their registrations up to date. This ensures renewals are always paid on time and that the trade mark won’t be cancelled.

Yes, a trade mark can last indefinitely if it is:

• Renewed every 10 years
• Genuinely used in trade
• Properly managed by the owner

Some of the world’s most recognisable brands have trade marks that are decades old. They remain protected because their owners continue to renew and actively use them. Think of a trade mark as a renewable asset. As long as you maintain it, it can continue to protect your brand for as long as your business operates.

When and How to Renew a Trade Mark

Renewal is essential if you want your trade mark to remain valid.

When to renew

Trade mark renewal timelines in Australia are flexible, but there are clear windows:

• Up to 12 months before expiry: You can renew early. Many businesses do this to avoid risk.
• On or before the expiry date: This is the standard renewal timeframe.
• Six-month grace period after expiry: If you miss the deadline, you still have a six-month grace period. Late fees apply during this time.

If you do not renew within the grace period, your trade mark may be removed from the register.

How to renew

Renewals are lodged through the Australian trade marks office. The process involves:

• Paying a renewal fee per class of goods or services
• Confirming ownership details
• Ensuring contact details are up to date

Many businesses choose to have their attorney manage renewals to avoid missed deadlines or administrative errors.

What happens if you don’t renew your trade mark?

Failing to renew can have serious consequences. Once the renewal deadline and grace period pass, the trade mark can be removed from the register. This means:

• You lose exclusive rights to the mark
• Your ability to enforce the mark is weakened
• Another party may apply to register the same or a similar mark

In some cases, restoration may be possible, but it is not guaranteed and can be costly. Letting a trade mark lapse can undo years of brand building. For most businesses, the cost of renewal is small compared to the value of the protection.

Common trade mark renewal mistakes

Many lapses happen due to avoidable errors. Some common mistakes include:

• Missing deadlines: Businesses change staff or email addresses and miss renewal notices.
• Incorrect owner details: If ownership changes and records are not updated, renewals can become complicated.
• Assuming registration is permanent: Some owners mistakenly believe trade marks last forever without renewal.
• Not monitoring actual use: A mark registered but not used can be challenged.

Proactive management prevents most of these issues.

When and How to Renew a Trade Mark

Your trade marks provide up to 10 years of protection, but they can be cancelled early for a variety of reasons. A trade mark may be cancelled by request of the owner, by court order, or by application from a third party

The owner of a trade mark could choose to cancel their registration early:

• If the trade mark is no longer going to be used for products and services
• If the business is rebranding
• To avoid trade mark disputes
• To reduce costs associated with maintaining the trade mark
• When changing strategy to target different markets, products, services or customers
• When restructuring the business, such as during a merger
• If the trade mark has attracted negative associations

Aside from voluntary cancellation, a trade mark may also be cancelled at the request of a third party if it has gone unused for a continuous period of 3 years (but no earlier than 5 years after the filing date, if the trade mark was filed before 24 February 2019).

A trade mark is considered to be unused if it isn’t actively appearing on any products, services or materials for which the trade mark is registered. Where a trade mark is being used for only some of the classes of goods for which it is registered, a third party can apply to have the registration altered.

Do You Have to Use a Trade Mark to Keep It?

Yes. A registered trade mark should be used in genuine commercial activity. That means selling goods and offering services under the mark or using it in advertising and marketing. Token use may not be enough, since the use needs to reflect real business activity. 

If a trade mark sits unused for years, it becomes vulnerable to removal.

Practical Tips to Keep Your Trade Mark Protected Long Term

Protecting your trade mark is an ongoing process that could include:

• Setting calendar reminders well before renewal dates
• Keeping ownership and contact details updated
• Monitoring the market for similar marks
• Conducting periodic portfolio reviews
• Seeking professional advice when expanding or rebranding

A little planning goes a long way in protecting brand value.

Manage Your Intellectual Property with the Attorneys From Kings!

Trade marks hold enormous value. Recognisable branding is a major component of ensuring your products and services stand out, so it’s crucial that you stay on top of your rights. When you need to make sure your IP is always up to date, Kings Patent and Trade Marks attorneys can help!

Kings is an independent firm that specialises in trade marks, patents and registered designs. Our attorneys have decades of experience, allowing us to develop effective trade marks applications for all classes of goods and services.

We provide support throughout the process and can help develop your application, register your trade mark, maintain your portfolio and protect your rights from unauthorised use. Our team has experience in all aspects of intellectual property, so you can rely on us to ensure your portfolio is always up to date.

Contact us today if you’d like to know more about trade mark renewal, or call us on 07 3088 8009 to book a consultation!

Did you know Australia has 45 different classes of goods and services to check during a trade mark search? Checking all the trade mark categories can be overwhelming for first-time searches, but it’s important to make sure your brand doesn’t conflict with any existing rights. 

As Brisbane’s expert intellectual property lawyers, the team at Kings IP knows how important an accurate trade mark search is. Currently there are two main ways to search for registered trade marks in Australia: TM Checker and the Australian Trade Mark Search system (ATMS). To make your search easy, we’ll guide you step-by-step through trade mark searches using both options, showing you how to avoid common mistakes in DIY searches and when to get professional help. We’ll make sure you understand how to protect your brand’s valuable assets in the Australian market.

Understand What You’re Protecting

You need to know exactly what you’re trying to protect before starting a trade mark search. Australian trade mark registration comes with specific requirements that you must meet.

What qualifies as a trade mark in Australia

Australian trade marks are signs that set your goods or services apart from other businesses. Your mark must be something you can represent graphically, meaning you need to show it visually through words, images, or other methods. As well as that, it must stand out from others in the marketplace. 

Types of signs you can register

The Australian Trade Marks Act lets you register various types of marks:

• Words (including names, slogans, and invented terms)
• Letters and numerals
• Logos and images
• Shapes of products or packaging
• Colours (when used in a particular way)
• Sounds
• Scents
• Aspects of packaging

There’s more to it than just this list, and not every mark qualifies for registration. Generic terms that describe your product or service won’t make the cut. For example, a brewery trying to register “Cold Beer” might be rejected because it lacks distinctiveness.

Why distinctiveness matters

Your mark needs to stand out from your competitors’ goods or services, and the more distinct your mark, the stronger protection you’ll get. 

Distinctiveness works on a spectrum:

• Invented terms like “Kodak” give you the strongest protection
• Random words used differently (like “Apple” for computers) protect you well
• Suggestive marks that hint at qualities offer decent protection
• Descriptive terms usually give weak protection unless they’ve proven themselves over time

Choose the Right Search Tool

Understanding what you need to protect helps you pick the right search tool. IP Australia gives you two main options to search for trade marks, and each has its own strengths.

When to use TM Checker

TM Checker is a free tool that helps with your original trade mark assessment. It uses artificial intelligence to review your proposed trade mark against IP Australia’s internal data. TM Checker works best if:

• You’re just starting with brand development
• You want a quick look at potential registration issues
• You need to know how much your application might cost
• You want to learn about registration timeframes

TM Checker doesn’t need an online account, which makes it easily accessible to small businesses and first-time applicants. All the same, note that TM Checker results can’t guarantee your application’s outcome. 

When to use Australian Trade Mark Search (ATMS)

Australian Trade Mark Search gives you a complete search experience. The database has details of all registered and pending trade marks in Australia. ATMS is your best choice if:

• You want to search existing registered trade marks
• You need to check specific classes of goods and services
• You’re searching for similar names, logos, or phonetic matches
• You want detailed information about trade mark status

ATMS updates happen daily and include records going back to 1906, giving you access to both current and historical trade mark information.

Differences between quick and advanced search

ATMS gives you two main ways to search. 

Quick search lets you look up trade mark words, owner names, and numbers. Special characters help broaden your results – asterisks (*) replace multiple characters, question marks (?) work for single characters, and quotation marks find exact phrases.

Advanced search gives experienced users more options. You can search up to four words at once and filter results by goods classes, trade mark status, and mark types.

These tools help with initial searches, but they have limits that trade mark attorneys can help you work around.

How to Do a Trade Mark Search Step-by-Step

Ready to start your search? Let’s walk through the steps to get a full picture of potential conflicts when searching for trade marks.

Step 1: Define your trade mark clearly

Your first task is to write down what you want to protect—whether it’s a word, logo, or both—and list the products or services you’ll offer. Making everything as clear as possible will give you more accurate search results. 

Step 2: Search for exact and similar names

Start with the quick search function to find matches similar to your proposed mark. Don’t just look for exact matches. Try adding variants and misspellings to make sure you don’t end up trade marking something that could cause disputes later on. 

Step 3: Check for phonetic and visual similarities

Trade mark law looks beyond exact matches and includes substantially identical or deceptively similar marks. You should look for sound-alikes (e.g. Kleener vs Cleaner) since these can confuse consumers and lead to objections.

Step 4: Select the correct class of goods/services

You’ll need to identify which of the 45 classes apply to your business. Your protection only extends to the specific classes you register in, so think about both current offerings and planned expansion. 

Step 5: Review trade mark status and details

Each potential conflict needs close attention. Look at whether similar marks are:

• Registered (active rights—high risk)
• Pending (likely to register—monitor closely)
• Removed/Expired (lower risk, but check recency)

Step 6: Search for unregistered (common law) marks

Databases show only registered marks, but even unregistered trade marks have protection under common law principles. A thorough search of Google, social media, and business directories will help you find businesses using similar names that might challenge your use.

When To Get Expert Help

Even when you follow all the search steps above, DIY trade mark searches have limitations that could affect your brand’s protection. 

Why DIY searches can miss risks

Launching a new brand is a big investment of time and money, and it pays to get things right. Unless you’re an IP expert, it’s easy to miss potential conflicts even when you search carefully. A misleading search might give you a false sense of security, only for you to run into trouble later on when disputes arise. DIY searchers might also have trouble understanding the nuances of similarity standards and miss marks that examiners would call deceptively similar. 

What a professional clearance search has

Professional searches go beyond simple database checks to cover:

• Complete Trade Marks Register checks for similar marks
• ASIC database searches for company and business names
• Phone directory and internet searches for unregistered marks
• Review of deceptively similar standards based on case law
• Practical strategies to handle identified obstacles

How Kings IP Can Make Your Trade Mark Search Simple 

Whether you run preliminary searches yourself or get professional help right away, knowing the trade mark search process is vital to protect your valuable intellectual property in the Australian market. The right brand protection from day one prevents expensive rebranding and legal disputes down the road. And while TM Checker and Australian Trade Mark Search offer tools for research, they’re just one part of a complete trade mark protection strategy. The last thing you want is to miss something in a DIY trade mark search that can get pricey and lead to rejected applications. 

Kings IP is here to help, giving you complete clearance searches to give you peace of mind. Our Brisbane trade mark attorneys can discuss all the available options for protecting your brand name and help you decide what’s right for your business.

Book a free consultation to see how we can help you understand how to register a trade mark in Australia.

Your business name and logo are often the very first things people notice about you. They’re the handshake, the welcome mat, and the face of your hard work. They tell your story before you’ve even said a word.

That’s why protecting them matters so much.

Registering a trade mark strengthens your business’s value, gives you exclusive rights, and makes it easy for customers to spot you in a crowded market. You can even bundle your name and logo into one application, which can be more budget-friendly, though it does come with a few things to consider before you apply.

At Kings IP, we know your brand is personal. You’ve poured time, money, and passion into building it, and we treat it with the same care you do. Our job? To make trademarking simple, stress-free, and rock solid

Understanding the Types of Trademarks in Australia

Australian trade marks provide legal protection for your brand’s unique identifiers. Your brand can protect various elements with trade marks. These include words, phrases, logos, shapes, colours, sounds, smells, pictures, movements, aspects of packaging, or combinations of these. You need to understand three main types of trade marks available to protect your business assets properly.

1. Word Mark: Protecting Your Business Name, Phrases or Slogans

Word marks are among the most commonly registered trade marks in Australia. They protect the verbal element of your brand without any visual design. With a word mark, your business name is safeguarded in any font, colour, or style.

To be registrable, a word mark must meet certain criteria. It needs to clearly distinguish your products or services from those of other traders. Common or purely descriptive words are difficult to register unless they are used in a distinctive or unique way.

2. Device Mark: Protecting Your Logo Design

Device marks, also known as figurative marks, protect visual elements  (with or without included alphabetical or numerical characters). . These can include drawings, pictures, or images. They were among the first types of trade marks used to indicate the origin of goods, and many well-known brands still rely on them today.

Not every visual element can be protected. To be registrable, a device mark must have enough distinctiveness to set it apart. Simple geometric shapes, standard depictions of goods, and common trade symbols generally cannot distinguish one trader’s products from another. However, imagery with distinctive styling or unique combinations of shapes will often have enough inherent character to qualify for protection.

3. Composite Mark: Name and Logo Together

Composite marks protect a combination of elements, typically your business name and logo arranged in a specific way. The protection applies to the overall impression created by the combined elements, rather than to each component individually.

These marks are highly effective at distinguishing a brand because the combination often creates something stronger than the parts alone. This can be especially valuable when individual elements might not qualify for protection on their own. For example, descriptive words that cannot be registered by themselves may become registrable when paired with distinctive visual features.

Registering a composite mark offers practical advantages. It signals your trade mark rights to competitors, prevents others from using similar marks, and creates obstacles for anyone trying to register something too close to yours. It also gives you legal tools to challenge unauthorised use of similar branding.

Can You Trademark Your Business Name and Logo Together?

Yes, you can register your business name and logo together as a single trademark in Australia. This approach, called a composite or combined trademark, protects your brand identity.

What a Combined Trademark Covers

A combined trademark protects how your business name and logo work together in a specific arrangement. The protection applies to the complete combination, not the separate elements. Your trademark only covers the combined image exactly as registered. This restricts how you can use individual components alone.

Benefits of Registering Together

Your business name and logo registration as a combined trademark has several advantages:

• Budget-friendly: The original costs are lower since you submit one trademark application instead of two. This leads to reduced fees and efficient maintenance needs.
• Easier distinguishability: Combined marks usually get registered faster because examiners look at the whole combination that creates something unique.

Registration of otherwise unregistrable elements: Generic or descriptive words become eligible for registration when combined with other trademark elements to create a distinctive mark.

Limitations and Risks of Combined Registration

Combined registration offers benefits but comes with some risks:

• Limited to the Exact Combination: Protection only applies to the specific combination. Competitors could use your name or logo separately without infringing, as long as they do not use both together in the same way.
• Updates Require New Registration: Changing either part of your mark can void protection. If you update your logo but keep the same name, you will need to file a new application.
• Must Be Used Exactly as Registered: Trademark rules require you to use your mark in the exact form it was registered. A combined registration may not provide enough coverage if you often use your name and logo separately.
• Higher Risk of Rejection: Examiners must approve every part of a combined trademark. If they reject one element, the entire application fails.

Should You Register Them Separately Instead?

Business owners often ask this question, and the answer depends on their business strategy and future plans.

When Separate Registration is Better

Each brand element needs its own complete protection. Registering your business’s name and logo separately creates stronger safeguards with dedicated trademark rights. Your brand’s success might depend on both components, so IP specialists suggest separate registrations. The business name registration should come first because it offers better protection in different formats.

Flexibility in Rebranding and Marketing

Separate registrations give you the freedom to grow your brand. This is a vital advantage. A composite trademark registration could become useless if you update your logo later, and you might need a new application. Separate registrations let you:

• Create marketing materials with just your name
• Make logo changes without risking your brand protection
• Keep your protection valid as your business grows

Cost vs Long-term Protection

Separate registrations need more money upfront but deliver better value over time. Companies that try to save money with single trademark registration often pay more later through legal issues or damaged brand value. Many businesses of all sizes start by registering their name first and protect their logo when they have the funds.

• Create marketing materials with just your name
• Make logo changes without risking your brand protection
• Keep your protection valid as your business grows

How to Register a Business Name or Logo in Australia

The Australian trademark registration process protects your intellectual property through specific steps. Here’s how you can protect your business identity by registering your trademark.

Step-by-step Trademark Process

Your trademark registration journey takes about 7.5 months from start to finish. You’ll get your filing notice within days. The formal examination begins 2-3 months later. After approval, your trademark goes through a 2-month advertisement period where others can object. The good news is that your priority rights begin the moment you submit your application.

Trademark Search and Class Selection

A detailed search using IP Australia’s trade mark checker tool should come first. This step helps you spot any conflicts with existing trademarks. The system offers 45 classes to choose from. Classes 1-34 cover goods while 35-45 are for services. Pick classes that match your main business activities. Stay away from classes meant for internal operations or promotional materials.

Common Mistakes to Avoid

Most applicants make errors by picking descriptive or generic names. Other mistakes include wrong classification of goods and services and submitting incomplete applications. Many people also think business name registration will protect their trademark rights.

Difference Between Business Name Registration and Trademark

ASIC’s business name registration simply lets customers know who you are. A trademark gives you exclusive rights across Australia. Your registered business name won’t stop someone else’s trademark from being used. However, a trademark lets you take action against similar marks.

Protect Your Brand, Secure Your Future with Kings IP

Your business name and logo are the face of your reputation, the mark customers remember, and the promise you deliver every day. Registering them as trademarks is a vital step in safeguarding your competitive edge.

At Kings IP, our intellectual property attorneys help make that process seamless. Our team navigates the complexities of trade mark registration with precision, ensuring your brand assets are properly protected and compliant. From assessing your eligibility to lodging your application and defending your rights, we handle every detail so you can focus on growing your business.

Don’t leave your most valuable assets vulnerable. Partner with Kings IP and protect the brand you’ve worked hard to build today, and for the future.

Trade Marks are a deceptively complex area of the law. The way trade marks are registered, used and enforced can lead to expensive clashes over intellectual property rights.

In this article, we’ll highlight some famous Australian trade mark infringement cases from recent years, as well as the outcome of these matters.

Some of the below matters deal with very interesting legal nuances, like enforcing trade marks across international boundaries, or the distinction between “cheeky branding” and misleading and deceptive branding.

1. Ugg Boots vs UGG Boots

Ugg boots are an Australian fashion staple. In the early 2000’s, The Deckers Outdoor Corporation tried to register a trade mark for “UGG”.

There’s no clear origin for the term “ugg boots”. The first known trade mark was registered in 1971 by Australian surfer Shane Steadman. Steadman registered the name “UGH-BOOTS” and used it to sell his popular sheepskin boots. In 1982, he registered more trade marks for “UGH” and “UGG AUSTRALIA”.

The popularity of ugg boots made it all the way to the United States in 1979 when Brian Smith became the US distributor of ugg boots. Smith later sold his interest to the Deckers Outdoor Company.

Deckers immediately registered trade marks for “UGG” in the US and 25 other countries. Deckers began to defend their trade mark and sent several cease and desist letters to Australian manufacturers by 2004.

In order to fight Deckers, 20 manufacturers joined together to form the Australian Sheepskin Association. The Australian Sheepskin Association contended that “UGG” was a generic term in Australia.

It was ultimately found that the terms “ugg”, “ugh”, and “ug” boots were generic terms in Australia and were the “most natural way in which to describe these goods”. This ruling ultimately allowed Australian brands to continue using the term “ugg boots” when selling their products.

Interestingly, when asserting infringement against US companies, it was held that being generic in Australia has no bearing in other jurisdictions. See more about Deckers vs Ugg boots here.

2. Kylie vs Kylie

It’s Kylie Minogue vs Kylie Jenner. Two of the biggest celebrities of the 21st century.
Their battle began in 2015 when Jenner attempted to register the mark “KYLIE” in the US for advertising services. Minogue’s team filed opposition in 2016, claiming that there would be possible confusion and damages to Minogue’s brand.

Kylie Minogue is an internationally-renowned singer and actress. Working in entertainment, Minogue’s name is a crucial part of her brand, and she maintains several trade marks that reflect this.
The matter was ultimately decided during mediation sessions, so the exact nature of the agreement between Kylie and Kylie is unknown.

What we do know is that the US Patent and Trademark Office rejected Jenner’s trade mark application in 2017. In interviews since, Minogue has hinted that the two reached a private settlement.

3. Katy vs Katie

Katy Perry is one of the world’s biggest pop stars. Katie Perry is an Australian fashion designer.

The two have clashed multiple times – in 2009 and again in 2021.

In 2008, the fashion designer filed a trade mark application for “Katie Perry” in Australia in relation to apparel. Katy Perry’s team missed their opportunity to oppose the registration of Katie’s mark, which led to negotiations between the two parties.

Later that year, Katy Perry applied to register her own name as a trade mark in relation to apparel. Katie’s trade mark was cited as a prior objection and the pop star ultimately had to remove “apparel” from her application.

The pop star’s team made the mistake of ignoring Katie’s trade mark when the singer toured Australia in 2014. During this tour, the pop star sold merchandise including t-shirts and the like, which infringed Katie’s trade mark.

This was the subject of a 2019 lawsuit. Katie Perry alleged that her trade mark was infringed, and the Australian Federal Court agreed. The distributor of Katy Perry’s merchandise was ordered to pay damages to the Australian fashion designer.

The court also ruled that the good faith defence of using one’s own name was not possible for Katy Perry in this instance as Katy Perry did not provide the merchandise in her own name. Rather, she did so through her companies Killer Queen LLC, Kitty Purry Inc. and Purrfect Ventures LLC.

You can read more about the outcome on Katie Perry’s blog.

4. In-N-Out Burger vs In & Out Aussie Burgers

In-N-Out Burger is a popular fast food chain in the United States. If you live in Australia then you may not have heard of them, but they have over 400 stores in the US.

The brand visits Australia now and again to test the waters with pop up shops, which often sell out due to their popularity.
Since the chain seems to be interested in expanding to Australia, they are closely guarding their trade mark. In 2021, this led In-N-Out Burger to sue an Australian business for trade mark infringement.
The Australian business – In & Out Aussie Burgers – operated as a ghost kitchen in and around Brisbane. It had no physical locations. Instead, its products were cooked by participating restaurants, and were only available through food delivery apps.

The lawsuit claims that In & Out Aussie Burgers was previously named “In-N-Out Aussie Burgers”, but changed the name after a cease and desist letter. It’s also noted that Aussie Burgers’ original branding was an “exact copy” of the In-N-Out logo.

In this case, In-N-Out was able to point to instances where the similar branding was creating confusion. They cited negative reviews Aussie Burgers had received that associated them with the American restaurant.
Puneet Ahori – owner of In & Out Aussie Burgers – chose to represent himself in court, saying he lacked the funding to hire counsel. The judge warned him against this due to the technical nature of trade mark law in Australia.

This warning proved to be fair, when Mr Ahori reached a settlement with In-N-Out in 2022. As part of the settlement, Mr Ahori effectively agreed to cease using the In & Out name and logo (and variations thereof).

You can read the full outcome here.

Because of their pop-up events, In-N-Out are able to assert significant reputation and goodwill in their brand in Australia without having a physical outlet.

If you happen to be on the pointy end of a cease and desist letter, it is wise to seek professional advice straight away.

5. McDonald’s vs Hungry Jacks

McDonald’s and Hungry Jacks have enjoyed a friendly rivalry over the years. Both brands have engaged in cheeky advertising that’s designed to target their core competitor.

But this competition has turned into lawsuits on several occasions. Most recently, McDonald’s took Hungry Jacks to court over their decision to introduce the “Big Jack” burger.

In 2020, McDonald’s sued Hungry Jacks, claiming that the “Big Jack” and “Mega Jack” burgers infringed the “Big Mac” trade mark.

In an affidavit, Hungry Jack’s chief marketing officer admitted that the choice of the name “Big Jack” was cheeky and that he knew it would likely be perceived as a taunt by McDonald’s.
Despite this, the judge ruled in favour of Hungry Jacks.

Justice Stephen Burley found that the two trade marks were sufficiently dissimilar, and that there was unlikely to be any confusion among customers. There was no evidence of deliberate deception and Hungry Jack’s was allowed to continue selling its “Big Jack” and “Mega Jack” burgers.

In a minor victory for Macca’s fans, McDonald’s launched an action against Hungry Jacks over claims that Hungry Jacks was being misleading and deceptive by claiming that their burger had “25% more Aussie Beef” compared to an unnamed competitor’s product (ahem: McDonalds).

In reality, the Hungry Jacks burger was bigger, but only by around 13%. Accordingly, Hungry Jacks were found to be engaging in misleading and deceptive conduct and were held to have breached section 18 of the Australian Consumer Law.

Manage Your Trade Marks Effectively With Kings!

Australia’s trade mark system provides excellent protection for your intellectual property. Trade marks represent substantial value to businesses, so it’s important to protect and defend your assets.

The team at Kings are expert trade marks attorneys that work with clients across Australia. We’re an independent firm that specialises in establishing, managing and enforcing intellectual property rights.

The quirky cases discussed above highlight the complex nature of Australian trade mark legislation.

If you want to protect your branding and ideas, the team at Kings can help.

Contact us for a confidential consultation about trade marks, patents and design registration.

Table of Contents

Your brand’s unique identifiers are a simple way to connect with customers and grow your business. If those unique identifiers are copied, it can dilute your brand and damage consumer confidence.

This can be prevented by registering a trade mark with IP Australia. Registered trade marks protect the unique signs that are associated with your brands, products and services.

Trade marks are often accompanied by a ™ or ® symbol. In this article, we’ll discuss the difference between an unregistered Trade Mark™ and a Registered Trade Mark®.

Introduction to Trade Marks

Trade marks protect the unique logos that distinguish your brands, products and services from those of others. They’re a form of intellectual property that helps customers identify your products or services at a glance.

Registration grants you the exclusive right to commercially exploit, licence or sell your trade mark.

A registered trade mark can be comprised of any of the following:

• Words
• Images
• Moving images
• Shapes
• Sounds
• Colours
• Scents
• Packaging
• Any combination of the above

Trade marks are registered in relation to classes of products and/or services. There are 45 classes of goods and services to choose from. You must register a trade mark in relation to the classes that the mark will be used in relation to.

It’s crucial to choose the right classes when applying for a trade mark. Selecting the wrong classes may leave you with a trade mark that doesn’t provide adequate protection, or it may  mean your trade mark could be subject to non-use removal application.

Differences Between Trade Mark™ and Registered Trade Mark®

The ™ symbol can be used by anyone to identify an unregistered trade mark. It provides only common law protection. The ® symbol can only be used alongside a registered trade mark.

The ™ Symbol

The ™ symbol stands for “Trade Mark.” It can be used alongside trade marks that are not registered with IP Australia.

In many cases, businesses use the ™ symbol to indicate that:

• A word, phrase or image is being used as a trade mark
• The business intends to register the sign as a trade mark
• The business is in the process of registering the trade mark
• The business may have a legal right to defend its use of the trade mark

It’s common for businesses to apply the ™ symbol as a way to warn others that they intend to claim common law rights in relation to a trade mark. Despite this, the ™ symbol does not indicate any registered legal rights enforceable under the Trade Marks Act. Unregistered trade marks are only enforceable at common law. Enforceability of common law trade marks is much more difficult than with registered trade marks.

The ® Symbol

The ® symbol stands for “Registered Trade Mark.” It can be used alongside a trade mark that is registered with IP Australia. Using the ® symbol indicates to others that the owner of the trade mark has a legal right to use, licence and defend the mark.

There’s no requirement to use either the ™ or ® symbol when displaying your trade marks. Using the appropriate symbol can be an effective way of deterring other businesses from misusing your unique identifiers. Furthermore, using the ™ symbol can be used to accrue distinctiveness for future trade mark applications. 

How to Register a Trade Mark

Registering a trade mark is a relatively straightforward process. You should work with a trade marks attorney when preparing and filing your application. An attorney will ensure your application is successful, and can prevent common issues such as applying for the wrong classes of goods and/or services.

The process is as follows:

1. Determine ownership of the trade mark

Trade marks can be owned by an individual, company, trustee, political body or a government entity. You must determine who owns the trade mark to prevent ownership disputes down the line.

2. Check your eligibility

To be eligible for trade mark protection, the owner must:

• Live in Australia or New Zealand (or have an agent who resides here), and;
• Use, or intend to use within three years of filing, the trade mark for the goods and/or services listed in your application

3. Perform an existing trade mark search

Trade marks must not be deceptively similar to earlier trade marks. Your trade mark attorney will perform a search of existing trade marks to ensure your trade mark is sufficiently different from existing trade marks. 

You may need to alter your trade mark if it is substantially similar to an existing trade mark.

Additionally, trade marks cannot be descriptive of the goods.  For example, a trade mark for “APPLE” could not be registered in relation to apples or apple farming, as it is descriptive of the goods.  In contrast, the same trade mark could (and is) registered in relation to electronics (see: Apple iPhone).

Image Source: IP Australia

4. Gather the required documentation

Your trade mark application needs to be supported by the following documentation:

• Ownership details
• A representation of your trade mark (e.g. an image of your logo)
• The goods and services your trade mark relates to
• Payment of Government Fees

5. Submit your application

Your attorney can now fill out and lodge an application with IP Australia.

6. Receive your outcome from IP Australia

IP Australia will examine your application and provide an outcome. This process generally takes 3-4 months from the filing date.  

If you need to have your trade mark examined earlier for commercial reasons, it is possible to expedite examination and receive an examination outcome within 1 month.  

If your application is successful, it will be accepted and published for 2 months in the Australian Journal of Trade Marks and the Australian Trade Mark Search.

Anyone can oppose the acceptance of your trade mark during this time. If there is no opposition, or if you overcome any opposition, your trade mark will be registered. Once registered, your trade mark is enforceable against third parties.

If your application is unsuccessful, IP Australia will provide an examination report stating the reasons for rejection. Trade mark applications may be unsuccessful because:

• The trade mark is not distinct in relation to the goods and services applied for
• The trade mark is too similar to existing trade marks
• The trade mark is associated with the wrong classes of goods and/or services

You have 15 months to respond to an examination report and overcome any issues raised by IP Australia. It is possible to extend this time via a request to the Trade Marks Office.

How Long Does Trade Mark Protection Last?

Trade marks can live forever, provided renewal fees are paid. Registering a trade mark in Australia provides 10 years of protection from the filing date. You then need to renew the trade mark by paying a fee.  Once the trade mark is renewed, it will remain registered for another 10 years. 

Why Register Your Trade Mark?

Trade marks are useful to individuals and businesses of all sizes. Registering your unique identifiers as trade marks helps to create value within your business and can prevent imitators from damaging your brand, or starting deceptively similar brands.

We recommend registering eligible trade marks for the following reasons:

1. Turn your branding into a business asset

Trade marks can be sold and licenced to others.

Licensing trade marks is a common stream of revenue for many businesses. It can also help a company grow, especially when entering new markets.

You may wish to sell a trade mark if a brand, product or service is being discontinued, or if a business is being sold. Registering a trade mark allows you to assign a monetary value to your unique branding during the sale process.

2. Exclusive right to use, sell and licence your trade marks

The owner of a registered trade mark has the exclusive right to use, sell and licence the mark. This provides excellent control over your brand, which is useful for marketing and to increase brand recognition.

3. Prevent others from registering similar trade marks

IP Australia maintains a database of registered trade marks. This prevents others from registering a trade mark that is identical or deceptively similar to yours in relation to similar goods and services.

4. Protection against unauthorised use

Registering a trade mark grants you the right to prevent others from infringing your trade mark. In practice, this allows you to stop other parties (such as competitors or third-party manufacturers) from using your trade mark without permission, and recover financial damages (including accounts of profit) relating to trade mark infringement.

When Do You Need an Attorney for Trade Marks?

Your business’ trade marks represent substantial value. For that reason, it’s crucial that trade marks are correctly registered and maintained.

We recommend engaging an attorney for all matters relating to trade marks, including:

• Searching existing trade marks (both registered and unregistered)
• Preparing an application for a new trade mark
• Responding to an examination report from IP Australia
• Responding to an opposition
• Renewing trade marks
• Licensing or selling a trade mark
• Infringement proceedings

Trade marks attorneys have an intimate understanding of intellectual property legislation. This is invaluable in protecting your IP and maximising its value.

Working with a trade marks attorney also ensures your IP is secure and is renewed on time, every time. Incorrectly filing trade mark applications or allowing trade marks to lapse can cause substantial losses, so it’s worth engaging a trade marks attorney to stay on top of your IP portfolio.

It is also necessary to engage an attorney if you are seeking to file your trade mark overseas.

Choose the Right Protection for Your Intellectual Property with Kings!

Protecting your intellectual property is one of the most important things you can do. Trade marks allow you to maximise unique branding, which represents substantial value as you grow your business.

The intellectual property attorneys at Kings are experts in trade marks, design rights and patents. We understand the value of your trade marks, so we can ensure your branding receives the protection it needs.

Our attorneys support you throughout the trade mark process. We provide assistance with trade mark clearance searches, preparing and filing applications, responding to objections raised by the Trade Marks Office and managing your IP strategy.

We can also help you with obtaining trade marks in overseas jurisdictions, which is strongly recommended if you intend to manufacture or sell your products or services internationally.

Book a confidential consultation with our team to learn more about registering a trade mark in Australia!