What is a trademark?
When people think of trademarks, the first thing that comes mind is usually their business name or logo – but did you know there’s more that can be trademarked? Trademarks are signs that make your business stand out from others, so that it is easily recognisable to customers and sets your business apart from others in the market. While business names and logos are commonly trademarked, you can also apply for protection of a slogan, tagline, colour, sound, product name and many other elements that make your business unique.
Why register a trademark?
Trademarks represent your business reputation and the way someone uses your trademark can make or break it. Think about it this way – you’ve built a reputation as a business that always delivers on time. A new competitor starts up with a name that is similar or almost the same as yours, but they have terrible customer service, and they always deliver late to customers. Customers confuse your mark for your competitor and you lose their business.
That’s why it’s best to register your trademark because this gives you a special status of protection. A registered trademark gives you the exclusive right to use the trademark for the types of goods and services it’s registered for. It gives you the authority to say you own it, and you don’t have to fight to prove it’s yours. It also gives you access to the Trade Marks Act (1995), which means that if someone uses your trademark without permission, or tries to use one that is deceptively similar, then you may have a claim for trademark infringement. While it’s possible to protect and defend against the use of an unregistered trademark, it can much more difficult, time consuming and costly than if you had registered protection.
How to register a trademark
In total, its takes about 7.5 months to register a trademark in Australia. This is done through IP Australia and the easiest way to make an application is through the Headstart process. This process is different to a direct application because it breaks up fees in a way that allows you to see the results of a preliminary report (lets you know if there’s any issues) before fully committing to the entire fee. This gives you a chance to make changes, rather than starting a completely new application and paying fees all over again. Of course, the type of application depends on your circumstances, and you should seek legal advice if you’re unsure.
If you’re planning to expand internationally, or will deliver services or sell goods overseas, it’s important to think about protection in those places too, as your Australian trademark won’t cover you internationally. If you want to register a trademark overseas, you can do that directly in each country or through a ‘Madrid’ application – but again, this depends on your circumstances.
Important tip: Usually first in time has the right to a trademark, so it’s critical that you apply as soon as possible to give yourself the best chance of securing your mark.
Can you do it yourself?
While it’s possible to apply for a trademark on your own, a lawyer can help you get it as close to perfect the first time -saving you time and money. A trademark needs to be capable of registration – special criteria apply – such as that the mark must be distinctive and not descriptive. This is sometimes a nuanced determination, and a lawyer can explain how you can tweak your trademark to give it the best chance of being accepted. You’ll also need to apply in a number of classes, and further specify the goods and services within those classes. If you get this wrong, your trademark might not offer you the protection you intended. This is where a lawyer can give you valuable advice and help you determine the right classes for your business.
Sometimes, your trademark will be similar to someone else’s – whether that be a registered or unregistered trademark. Before you apply, we recommend undertaking ‘clearance searches’. This is where a lawyer or trademark attorney can help search the marketplace for similar or same trademarks that already exist. If there’s nothing out there, then that’s great, but often there will unregistered trademarks that you’ll need advice about. Sometimes these searches highlight risks, such as the fact that you may be infringing on someone else’s trademark without even knowing it! This information will impact your application and if you don’t know about it, you can’t address it before paying application fees.
Important tip: Registering a business name or domain name does not offer any protection over the use of your business name. To stop others from taking using your name, you’ll need to register a trademark.
If you see the value in protecting your trademarks, we can help you with clearance searches, advice and registration.