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Trade Marks.

Registration of a trade mark provides its owner with exclusive rights to use, or authorise the use of, the trade mark in relation to the goods or services for which it is registered. 

Kings Patent & Trade Marks Attorneys are experts in the field of trade marks, making it easier for you to register.

A trade mark may be any sign used to signify that products or services originate from a particular person or company; are authorised by that person or company, or are of a particular quality.  

A trade mark may be: 

Word or Words

Slogan

Logo

Packaging

Colours

Shapes

Sounds

Smells

Useful Links:

  • Obtaining trade mark protection in Australia and/ or overseas; and
  • Australian trade mark application process 

If you would like more information around trademark protection for your brand, please contact us to arrange your free consultation.

When a trademark is a brand name of a business it can be one of its most valuable assets, representing the goodwill and reputation it has built over time.

Trade mark registration should not be confused with the registration of a business or company name, which generally does not afford the owner of that name any ownership of that name nor immunity from trade mark infringement.

Kings is experienced in providing trade mark advice, prosecution and portfolio management to some of Australia’s most successful companies.  We are also experienced in resolving trade mark disputes and oppositions with a strong focus on practical commercial outcomes.

Original Vegemite tin | Kings Patent & Trade Marks Attorneys

Pictured: Vegemite has been a pantry staple in Australian households for almost a century.  The Vegemite trade mark dates back to 1923.

How do I obtain a Trade Mark in Australia?

Trade marks are registered in respect of specified goods and/or services. For the purposes of registration, goods and services are classified into 45 classes. An application may nominate goods and services falling into one or more classes. The cost of an application dependent on the number of classes nominated (but not the number of goods/services in a specific class).

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 several requirements, the two main requirements being:

  1. The trade mark must be distinctive or at least capable of becoming distinctive. It must be capable of distinguishing the goods or services of a trader from those of other traders. 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 which is registered or pending in relation to the same or similar goods/services. Furthermore, 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.

What if an objection is raised againt my Trade Mark?

If objections are raised by the trade mark examiner, a period of 15 months is allowed within which to overcome the objections, e.g., by submitted argument, amending the application or submitting evidence of use of the trade mark. Extensions of time may be available, with payment of extension fees.

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

If opposition is filed, both the applicant and the opponent are given an opportunity to lodge evidence and the matter is 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.

Thereafter, the registration can be renewed indefinitely for 10-year periods.
If a registered trade mark is not used during a continuous period of three years in relation to the goods or services for which it is registered, any third person may apply for removal of the trade mark on the ground of “non-use”.

Can I register a Trade Mark in a foreign country?

Almost all foreign countries have trade mark laws which permit registration of trade marks. Registration is strongly recommended in each foreign country in which a trade mark is proposed to be used or licensed, for the following reasons:

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

Before using a trade mark in a foreign country, it is recommended that a search be conducted to ascertain whether the mark is, in fact, available for use and registration in that country. It is also advisable to check that the proposed trade mark will be acceptable to consumers in foreign countries or markets. That is, the proprietor should ensure that the trade mark does not have an unfavourable meaning or does not translate unfavourably, derogatively, or descriptively in the particular foreign country.

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

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

If registration is required in multiple countries or regions, it may be more cost effective to obtain an international registration under the Madrid Protocol. An owner of an existing Australian trade mark application 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 are part to the Madrid Protocol.

The appropriate route and strategy for registering trade marks in foreign countries will depend on the number of countries, and the particular countries to be covered.

Need more information in regards to Trade Marks Law? Contact Us Today

Our Experienced Team

Jack King-Scott | Director | Kings Patent & Trade Mark Attorneys

Jack King-Scott, PHD - Director

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Jack is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

Clinton Priddle | Director | Kings Patent & Trade Mark Attorneys

Clinton Priddle - Director

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Clinton is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

Jonathan Lewis | Kings Patent & Trade Mark Attorneys

Jonathan Lewis

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Jonathan is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

Melanie Serafini | Kings Patent & Trade Mark Attorneys

Melanie Serafini

PATENT AND TRADE MARKS ATTORNEY (AUSTRALIA AND NEW ZEALAND)

Melanie is a registered Australian and New Zealand patent attorney as well as a registered Australian trade marks attorney.

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