What Is A Registered Trademark?
You may have a registered company name, or have your business name registered with the Office of Fair Trading, but that isn’t enough to stop competitors using your brand.
Although it is not compulsory, registering a trademark gives you exclusive rights throughout Australia to use your trademark for the goods and services described in your trademark registration. With a registered trademark, you have rights against others who try to use marks which are similar to yours for similar goods or services.
A trademark can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these. It is used to help consumers distinguish your goods and services from those of other businesses.
What A Trademark Lawyer Does
They assess your proposed mark and carry out a search of the trade mark register to advise on your options for registration.
They can then lodge your application (with the filing fee). Applications are examined by IP Australia to see if they meet the requirements of the Trade Marks Act 1995. It can take up to four months for the application to be examined, though it is possible to apply for expedited examination if there is a reason for urgency.
If your trade mark is accepted for registration, the details of the application will be advertised in the Official Journal of Trade Marks. For 2 months after the advertisement date, anyone who believes your trade mark should not be registered may oppose its registration.
If no opposition is filed against your application, or if opposition is unsuccessful, your trade mark will be registered when you pay the registration fee. The registration fee is due no later than 6 months from the date of acceptance.
IP Australia will then send you a Certificate of Registration and record the details of your trade mark in the Register of Trade Marks.
Your trademark will be registered from the date you filed your application, not from the date it was examined or accepted, or from the date the registration fee was paid.
IP Australia Fees*
You can file your application online with IP Australia to minimise your fees. The fees payable at the time of applying for the trade mark are between $120 and $350 for each class of goods or services, per mark.
Registration fees payable within 6 months of acceptance are $300 per class, per trade mark.
A full list of IP Australia fees is available here.
Renewing Registered Trade Marks
Trade mark registration must be renewed every ten years.
International Trade Marks
There are two ways you can apply for an overseas trade mark. Both require you to have filed an Australian application first.
1. Madrid Protocol
The Madrid Protocol is an international agreement designed to simplify the application process for international trade marks. You can file a single Madrid Protocol application, based on your Australian application, and designate in which countries you seek trade mark protection.
The Madrid Protocol process is usually quicker and cheaper than filing in each country individually, and may be made in English (avoiding costly translation fees). It is also easier to maintain, as changes to the applicant and renewal of your registration may be made by a single request with a single fee. After filing, the application is assessed for formalities, including the classes, filing fees, and applicant details. The application is then submitted to each designated country for assessment against the trademark law in that country.
If filed within six months of your Australian application, a Madrid Protocol application will keep the priority date of your Australian application. A list of the 88 Madrid Protocol countries is available here. Please note that if a country is not listed (such as Canada), an application must be made separately to that country as a Convention Application.
The Madrid Protocol process is usually cheaper overall if you intend to file in several countries at once.
An application under the Madrid Protocol currently costs:*
- a basic fee of between CHF 653 (approx $704.96) and CHF 903 (approx $974.85);
- country-specific individual fees (fees differ from country to country: a list can be viewed here detailing the amounts in Swiss francs (CHF));
- complementary fee of CHF 100 (approx $107.96) if there is no country-specific individual fee for that country;
- if more than 3 classes are nominated then a supplementary fee of CHF 110 (approx $118.76) also applies (unless all designated countries require individual fees, in which case there’s no supplementary fee); and
- IP Australia fee of $100.
2. (Paris) Convention Application
A convention application is essentially an entirely new application in the overseas country. You will retain the priority date of your Australian application if you file within 6 months of your initial filing date. Costs of these applications vary significantly between countries, and a local firm in that country must be appointed to pursue the application.
The convention application process is usually cheaper if you only intend to file in one or two countries.
For countries who are not a party to either the Madrid Protocol or Paris Convention, you may need to apply as a new application under the laws of that country.
Remember – trademarks are initially assessed on a first come, first served basis, so the sooner yours is filed the better!
* Accurate as at 28 January 2015