Is Trademark Registration Necessary to Safeguard My Brand?
In Australia, brands can find protection under consumer laws (Australian Consumer Law) and common law (referred to as "passing off"). However, registering a trademark provides brand owners with a more straightforward and cost-effective means of establishing and asserting their rights to the brand. Registering a trademark also allows you to claim trademark infringement under the Australian Trade Marks Act 1995. It's important to note that trademark registration is the sole method for obtaining exclusive rights to use the brand (registrations for company names, business names, and domain names do not grant such rights).
We strongly recommend considering trademark registration whenever feasible to secure and maintain control over your brand.
What Are the Benefits of Trademark Registration?
How Do I Go About Registering a Trademark?
Trademark registration is accomplished through the relevant government authority in each country. The process entails an examination of the trademark in each country. If there are no objections during the application process, the trademark will be accepted and published, allowing for opposition by third parties. The duration of opposition periods varies from country to country (typically 1-3 months). In the absence of opposition, the trademark is registered. Most countries grant trademark registrations that are valid for 10 years.
What's the Typical Duration for Registration?
In Australia, trademark registrations typically require a minimum of 7 months for completion. However, this timeframe may extend if objections arise during the application process or if the application faces opposition following acceptance.
Can I Make Amendments to My Trademark Application After Filing?
Amendments to a trademark application are permissible only under very limited circumstances. Such changes are generally restricted to minor corrections, as significant alterations, like modifying the trademark or expanding the list of goods/services, necessitate the filing of a new application. Thus, it's crucial to ensure the accuracy of your trademark application before submission.
What's the Significance of Specifying "Goods" and/or "Services" in a Trademark Application?
All trademark applications must specify the goods and/or services on which the trademark will be used. There are 45 classes of goods and services available. It's imperative to accurately list the goods and/or services at the time of filing because additions cannot be made to the application once it's filed.
I Utilize My Trademark in Color; Should I File It in Color?
In Australia, if you file your trademark in its color version, your rights will not be confined solely to that color unless you expressly request such a limitation. Nevertheless, we recommend filing the application in black and white because this provides protection for all colors, without any ambiguity regarding potential limitations to a specific color version.
Distinguishing Between the ® and TM Symbols
The TM symbol signifies that you are asserting trademark rights in your brand. It can be used even before an application is filed, while an application is pending, and after the trademark is registered.
Conversely, the ® symbol can only be employed when your trademark is officially registered with the government authority in the relevant country. Using the ® symbol when a trademark is not registered is considered an offense under the legislation of most countries.
Is It Necessary to Use My Trademark Once It's Registered?
In Australia, a trademark is registered for a period of 10 years from the application's filing date. While there is no obligation to use the trademark in Australia during this time, it may become vulnerable to challenges for non-use. It is advisable to utilize your trademark within three years of its registration. Some countries, like the United States, impose usage requirements, necessitating the use of the trademark within a specified timeframe to avoid cancellation.
If you have any questions about trademarks in Australia or abroad, please do not hesitate to reach out to us.