Trade Mark Attorney Brisbane.

Trade marks are registered with respect to specific goods and services. For the purposes of registration, goods and services are separated into 45 classes. An application may nominate goods and services falling into one or more classes. The cost of an application is dependent on the number of classes nominated.

After an application has been filed with the Trade Marks Office, it will be examined by a Trade Marks Examiner. To be registrable, a trade mark must satisfy two main requirements:

1. The trade mark must be distinctive, or at least capable of becoming distinctive. It must be capable of distinguishing your goods or services from those of others. It should therefore not be generic, or descriptive of the goods or services.
2. The trade mark should not be substantially identical or deceptively similar to any earlier trade mark (including both registered and pending trade marks) in relation to the same or similar goods and services. Further, the trade mark must not be confusingly similar to a trade mark for which another trader has acquired a reputation in a similar field of business.

Where the Trade Mark Examiner raises objections, a period of 15 months is allowed to overcome them, such as by submitted argument, amending the application or submitting evidence to support your application. Extensions of time may be available but will incur extension fees.

If the examiner raises no objections, or if the objections are overcome, the application is accepted. The acceptance is advertised in the Official Journal of Trade Marks. Within two months of the acceptance advertisement, any person may oppose the registration of the trade mark.

Should anyone oppose the registration, both the applicant and opponent are given the chance to lodge evidence and be heard by a Delegate of the Registrar of Trade Marks. In most cases, trade mark applications are not opposed.

If there is no opposition, or if the opposition is unsuccessful, the trade mark will proceed to registration. The initial term of registration is 10 years from the date of filing of the trade mark application.

The trade mark registration can then be renewed indefinitely for 10-year periods.

Should a trade mark go continuously unused for three years (in relation to the goods and services for which it is registered), any third party may apply for the removal of the trade mark on the grounds of “non-use.”

Most foreign countries have laws which permit the registration of trade marks. It is strongly recommended that trade marks be registered in each country in which they will be used or licensed. Nationalising your trade marks is important for a number of reasons:

• In foreign countries, it is generally more difficult to rely upon common law rights to protect an unregistered trade mark
• Many countries use a “first to file” rule where the first person to file a trade mark application is entitled to registration, excepting where there is earlier use of the same mark by another party
• Registration provides control over how the trade mark is used by a licensee or distributor in their country

Before using a trade mark in a foreign country, it is recommended to search local registers to find out whether the mark is available for use and registration. It is also advisable to check that the proposed trade mark will be acceptable to consumers in foreign markets. That is, the owner should ensure their trade mark does not have an unfavourable meaning or translation in that particular country.

Trade marks can be registered on a country-by-country basis by filing a separate national application in each country or region of interest.

It is also possible to register trade marks for some economic regions. For example, a single European Trade Mark registration covers the whole European Union.

If you need a trade mark attorney in Australia to register a trade mark in multiple countries or regions, it may be more cost-effective to obtain an international registration under the Madrid Protocol. The owner of an existing trade mark application Australia wide or registration may apply for an international registration designating one or more countries or regions which are party to the Madrid Protocol.

Click here to see which countries take part in the Madrid Protocol.