What’s in a name?
What’s your name? What’s this item called? Which shop did you get that from? All these questions have one thing in common, the answer to them identifies an object, rendering it meaningful to the questioner.
One reason why trade mark protection exists is for the purposes of “product-identification”. This has practical value as if everything has the same name, then how do we identify the item we are trying to represent? On a more practical level, product identification plays out in situations such as passing-off or trade mark infringement.
Trade marks often form an important part of a business and should be protected as such. Did you know that not only logos can be protected?
Trademark registration in Australia can include colour, shape, and even scents.
So, if you are using something special in your business and wish to protect it, what should you do?
One practical step to take to protect your “mark” is to register it as a trade mark. However, before rushing to register anything, you should first consider if the identifying mark is a defined trade mark.
What is a trade mark?
According to section 17 of the Trade Marks Act 1995 (Cth), “A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”
A simple way to do your Trademark registration in Australia is through using IP Australia’s TM Headstart. This is a pre-application service which allows your mark to be examined and analysed to ascertain the probability of your mark being registered. One of the advantages of this is to help you spot any issues that your application might have before you formally file your mark with IP Australia.
Can my trade mark application be rejected?
A common reason for a trade mark application to be rejected is based on section 44 of the Trade Marks Act 1995 (Cth) which states “an application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services ) from the goods or services of other persons”.
For example, the examiner might notice that your trade mark is really just a description of your service and therefore has a high chance of being rejected from registration.
What happens if my trade mark is refused?
The examiner would then let you know how your trade mark “fared” within five working days. At this juncture, you may choose to amend your mark so that it will have a higher chance of getting the registration approved. If you are satisfied with the feedback, you may choose to pay the Part 2 fee, which converts your Headstart application into a standard application. A standard application means that your trade .
Therefore, although it does cost a bit more than filing your mark straight, you might save more in the long run as it gives you a chance to correct your application if it is not done right the first time. Furthermore, the turnaround time of five working days for an examiner to get back to you if you use the Headstart service is much quicker than if you wait for the results of a normal application.
Using Headstart is a straight forward process that requires you to put your application through online. After the examiner gets back to you, you are given five days to consider the results and lodge any amendments you might want to make or if you are satisfied with the feedback, you may choose to pay the Part 2 fee, which converts your Headstart application into a standard application. It is when you have paid this fee that your trade mark gets allocated a filing date.
If you do choose to make any amendments, you may have to pay an associated fee. However, if you do not make any amendments and do not pay the Part 2 fee to convert your Headstart application into a standard application, your Headstart application will be discontinued.
This means that if you wish for that trade mark to be registered, you would need to either start the Headstart process again or apply for your trade mark to be registered under the standard process.
Trademark registration in Australia, process and application;
Before applying, you should consider which class of goods and services that would best work for your mark.
IP Australia provides a good introduction to how the classes work, It is wise to give this some thought as this will be the class that your trade mark will be protected under.
Remember that you do not have to limit yourself to just one class! However, each class you register for would cost you an additional fee.
You can make your application using online e-service IP Australia platform.
Furthermore, if you want to find out more about the most important things to consider before make your trademark application and any specific advice, feel free to contact one of our lawyers. They will be happy to help you on your trademark registration in Australia
 Mathias Strasser, ‘The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into Context’ (2011) 10(2) The Fordham Intellectual Property, Media and Entertainment Law Journal 379.
 S 17 of the Trade Marks Act 1995 (Cth); http://manuals.ipaustralia.gov.au/trademarks/Part_21_Non-traditional_Signs/21.7_Scent_trade_marks.htm
 Trade Marks Act 1995 (Cth) s 17.