6 steps to trade mark registration
Your branding tells consumers who you are, what you represent, and helps them distinguish your goods and services from those of your competitors.
It is crucial to ensure third parties don’t exploit, tarnish or dilute your business’s reputation by using your branding. This can be done by protecting your branding as a registered trade mark.
Below we look at the six steps needed to protect your branding with registered trade marks. We encourage you to follow along by downloading our trade mark flowchart below.
Step 1 – File an Australian trade mark application
To obtain a trade mark registration, your trade mark it must be (1) distinctive and (2) different from earlier-filed trade marks.
To be distinctive, your trade mark should not be a word, phrase or logo that others in your industry might ordinarily want or need to use in the course of trade. For example, the name SOFAS PLUS is unlikely to be distinctive for a sofa or furniture store.
It is often problematic to trade under a name or brand that is not distinctive of your goods/services, not least because it is very difficult if not impossible to trade mark, in which case you cannot have exclusive rights to it and thus competitors are also free to use your name and brand and this may lead to consumer confusion. Where possible, it is usually recommended to pick trade marks that are distinctive of your goods and services.
Your trade marks attorney can advise on the distinctiveness of your trade mark and ensure it doesn’t conflict with existing trade marks.
Below are some other facts and tips for filing a trade mark application:
Trade mark protection can last forever.
Trade marks are registered under specific goods and services, each of which are sorted into one of 45 trade mark classes.
Your trade marks attorney can prepare your specification of goods and services based on your business plans.
The Australian Trade Marks Database can help determine the availability of your trade mark.
Step 2 – File an international Madrid Protocol trade mark application
A trade mark application filed under the Madrid Protocol is an international-style application which streamlines the filing process and allows you to file trade mark applications in 100+ countries with a single application.
You will need to file a “home” application first (such as an Australian application) to progress with an international Madrid Protocol application.
If you are looking to grow and protect your brand overseas, particularly in two or more countries, speak with a trade marks attorney about filing a Madrid Protocol application and bear the following points in mind:
- The filing fees for a Madrid Protocol application vary based on the countries selected.
- Filing fees are often lower because overseas attorneys are not required.
- Some countries are not members of the Madrid Protocol. To protect your trade mark you will need to file separate applications in these countries. These include Argentina, Sri Lanka and Taiwan.
- If filed within six months of your home application, the Madrid Protocol application can share your home application’s earlier filing date.
- Check if your trade mark is available overseas using this international trade marks database.
- Download our Madrid Protocol flowchart below to see what the application process looks like.
Step 3 – Have your trade mark applications examined in each country of interest
Each of your trade mark applications are examined to ensure your trade mark is distinctive of your goods and/or services.
Each national trade mark office will also check if your trade mark is too similar to earlier-filed trade marks to ensure there is no branding conflict between traders. The examination process can take over six months, but this can be sped up if there are pressing commercial reasons (e.g., if you have an upcoming rebrand or product launch, or if you need to take action against an infringer).
The trade mark application and examination process is also invaluable because it helps to uncover whether a trade mark similar to yours is already registered. If so, using your trade mark may infringe the registered trade mark, in which case you could be liable for damages and forced to rebrand. It is thus best to discover these issues earlier on so you can avoid the more serious consequences later on.
Tip: To ensure your trade mark is registrable and safe to use, have your trade marks attorney conduct a registrability and clearance search before committing to your branding.
Step 4 – Respond to trade mark objections
It is not unusual for a trade marks office to object to the registration of a trade mark. A typical objection sounds like this:
Your trade mark is not distinctive of your goods and/or services; and/or
Your trade mark closely resembles one or more earlier-filed trade marks.
As such, granting you exclusive rights to your trade mark could be unfair to other traders and/or could lead to consumer confusion in the marketplace.
Facing objections can be a standard part of the trade mark application process and your trade marks attorney can devise a strategy to address them.
Objections are often addressed by filing legal arguments and statutory declarations proving the commercial use and reputation of your trade mark and its capacity to distinguish your goods and/or services from those of other traders.
Step 5 – Trade mark applications are accepted
After all objections (if any) are overcome, your trade mark applications will be “accepted”. Accepted doesn’t mean registered, but you’re practically at the finish line.
During the acceptance period (two months in Australia), third parties will have a chance to oppose the registration of your trade mark. That said, the vast majority of accepted trade mark applications are not opposed and proceed smoothly to registration.
However, if your trade mark application is opposed, or if you wish to oppose a trade mark you do not believe should be registered, the process can be quite involved and we would recommend engaging a trade marks attorney to assist.
Step 6 – Trade marks are registered
You have overcome any and all objections, no one has opposed your trade mark applications and now you have registered trade marks around the world protecting your brand.
Now that your trade mark is registered, bear the following tips in mind:
- Treat your trade mark as an asset which you can grow, license, transfer and sell.
Monitor competitors and take action if you detect infringing activity.
- Ensure you use your trade mark with the goods and/or services in respect of which it is registered, otherwise your trade mark registration can be removed.
- Beware of trade mark scams which look legitimate but can cost a fortune.
In growing any business, it is important to ensure that your branding and commercial reputation are in your control and not able to be diluted or borrowed by third party competitors. Filing for and registering trade marks in each country of commercial interest is thus an inevitable point along any growing company’s trajectory.
If you have any questions or need assistance with registering your trade marks, please feel free to book a complimentary appointment with us below: