TRADEMARKS, BUSINESS NAMES, COMPANY NAMES and DOMAIN NAMES
Registration of a Business Name, Company Name and even a Domain Name WILL NOT PROTECT THE NAME without infringing on a registered trade mark through-out Australia, registration as such also WILL NOT give you exclusive rights the marketing and/or advertising of such name, unless you have ensured it will not infringe upon a trademark that is currently registered or pending in Australia, and identifies same, similar or related products or services
As can be seen, a registered trade mark can be very powerful. Hence it is very crucial that you consider protecting any names that you currently use or intend to use, other-wise risk losing it.
Obtaining registration of a trade mark in Australia can be a rather lengthy process. Currently it takes approximately 15 months (providing there are no delays etc) to obtain registration. This does not mean that you have to wait so long in order to use your trade mark. You can commence using your trade mark – with a ™ symbol from your initial date of lodging an application, and even prior to lodging an application. This DOES NOT mean that you can claim registration, as at this stage your trademark application is JUST THAT, an application for registration.
The use of a ™ symbol basically means that your trade mark is pending, and it also acts as a notice that you are claiming rights to it in relation to the goods or services in which it is being used to identify.
STEPS/PROCESS (Based on a word mark/search only. A graphic or image search is separate)
There are what we regard as being four (4) main steps/stages to go through, in order to obtain registration of a trade mark.
Step 1 Thorough trade mark Infringement Search
Step 2 The filing of a trade mark application
Step 3 The examination of your trade mark application
Step 4 The registration of your trade mark
STEP 1
A trade mark search IS NOT the same as doing a Business name, Company name or domain name search, absolutely the opposite.
You need to know whether or not you can use the mark or not without infringing on some-one else’s trade mark, by having a thorough trade mark infringement search conducted. http://www.ipaustralia.gov.au/trademarks/search_index.shtml#atmoss
The search not only covers the way a word or words are spelt, but also how it may sound if spelt differently, but still sound the same or similar, such as phonetically, as well as taking into account, prefix, suffix and part-word. The search covers same or similar trade marks that are used to identify the same, similar or related goods or services to that of your trade mark. Having this type of search conducted is crucial as formal examination and registration – if accepted, will not occur for approximately 9-15 months, so in the mean time, especially if you have not ensured that a thorough search has been conducted, you will be using the mark at risk. Have a search conducted will by far reduce any such chances of infringement while awaiting formal examination and acceptance.
STEP 2
This step involves the preparation and filing of a trade mark application.
Here you need to identify specifically, the goods and or services that you wish you trade mark to be synonymous within the marketplace, either now or within the next 2-5 years.
These details are required once the search report is favourable and when ready to file an application.
This part is also very important, as once an application is filed with the goods or services listed, you cannot at any stage later attach any further goods or services this application without having to file another application for additional costs or fees.
There are 45 different categories or classes of trade mark registration.
The goods and/or services associated with your trade mark may fall into one or more classes or categories. Depending on such goods or services may mean that you need to file an application in one or more classes or categories.
Once the application has been filed,
you can start using the mark with the ™ symbol,
but as previously stated, you cannot claim registration yet.
http://www.ipaustralia.gov.au/trademarks/online_index.shtml
STEP 3
This is the formal examination of your trade mark and goods or services associated or listed in your application.
This step commences approximately (at this stage) 4-6 months after your application has been lodged.
If the specialist examiners have any concerns, queries etc in regards to your trade mark or application, a report will be sent stating such, this you will need to respond to such queries or concerns.
Once and if everything has been clarified and or cleared up, the trade mark will then be accepted for registration, but then must be advertised as being accepted for registration – for A PERIOD OF 3 MONTHS, commonly known as an opposition period, whereby other trade mark owners, if they disagree with the acceptance for registration of your trade mark, they can oppose the acceptance. They would need to also provide details of the reason why they opposing as well.
STEP 4
If there is no opposition, you can then, and even within the 3-month opposition period, pay the registration fee per single class application.
Once paid, you will receive a certificate of registration.
Your trade mark will then be registered for a period of 10 YEARS.
You can then change the ™ symbol to the letter ® symbol, meaning registered.
You will the also have exclusive rights to the use of THAT trade mark, for the goods and or services associated with THAT REGISTRATION, Australia-wide.
Your trade mark can be regarded as an asset of yours, or of the company, a tradable piece of property, and you can apply your own dollar value to it. Which includes all fees associated with the development of the mark through out its life, such as fees associated with getting it registered, as well costs associated with the marketing and advertising of it.
From there on the trade mark registration only need to be renewed each 10 years – without any further searching etc.
For more information please visit http://www.ipaustralia.gov.au for more details.
Offices
of Fair Trading Google Search
National Names Index
Australian Securities & Investment Commission