Why You Should Register Your Trade Marks?

Obtaining a business name or company name will not provide you with exclusive rights to use that name. Only a Trade Mark will provide you with exclusive right to use the name in respect of the goods and/or services for which it has obtained a market reputation.

Common Law rights will arise from the use of your Trade Mark. However protecting your rights under Common Law will be very expensive.

Registration provides statutory protection for the intellectual property rights in your Trade Mark. This will provide a cost efficient method of protecting your rights to the mark.

Registration will also prevent the registration of other marks that are similar to your mark in respect of similar goods and/or services. This will also assist to limit the opportunity for another trader to use a similar mark in the market place and therefore limit the opportunity for confusion.

In addition, the fact that your Trade Mark is registered will become known to other traders who conduct a search of the Trade Marks Office Register. This may dissuade them from adopting a similar mark to yours.

Availability Search:

Although it is not necessary, we recommend an availability search be conducted to locate existing registrations and prior applications for similar marks.

Searches are conducted using various databases, including that maintained by the Australian Trade Marks office.

We will provide you with a written report on the prospects of achieving registration of the mark.

Our report will also provide advice on whether use of your proposed mark is likely to infringe the rights of the owner of any registered Trade Marks. This is most important if you intend to commence using the mark prior to achieving registration as such use may infringe the rights of other traders which could result in considerable cost.

Preparation and Filing Application for Registration:

The application needs to identify the goods and/or services for which the Trade Mark will be used. Goods and Services are classified in 45 classes according to their nature.

Therefore we will devise a description of the goods and/or services of interest to you. This will be developed from information that you supply and should include goods and/or services that are within your future expansion plans.

From the information you supply, we will draft a specification of goods and/or services that provide you with the broadest possible protection.

We will then prepare and file the application with the Australian Trade Marks Office. We can execute all documents on your behalf. A Power of Attorney is not required in Australia.

Examination:

The application will be formally examined to determine if it is an acceptable Trade Mark and whether there are any pre-existing registrations or applications which will prevent your application from proceeding to registration.

Applications are examined in order of filing and it is common for a delay of approximately four months to occur. In certain circumstances a request for examination to be expedited can be made. We can advise you further on this upon request.

Objections arising from the examination process are common. The Australian Trade Marks Office will provide a report outlining the objections.

We will then provide you with a copy of this report with our advice on how to overcome the examiner's objections. A firm quote for any further work will be provided to you with our advice.

Overcoming Examiner's Objections:

There are various methods of overcoming the examiner's objections, depending upon the nature of the objection raised. It is often possible to submit argument to persuade the examiner to withdraw the objection. Other methods may involve making amendments to the application or submitting evidence of use of the mark.

Acceptance of the Application for Registration:

When the examiner's objections are overcome, the Australian Trade Marks Office will issue an Acceptance Notice. The details of the application will be published in the Official Journal of Trade Marks. This is published weekly and a three month period from the date of publication is allowed for other parties to formally oppose the registration of your Trade Mark.

In the event that your application is opposed, we will advise you further at that time.

If there is no opposition, the Trade Mark will be registered upon payment of the registration fee. The Australian Trade Marks Office will then issue a certificate of registration that will be valid for a ten year period dating from the original date that the application was filed.

Renewal of Registration

We will contact you when your Trade Mark is due for renewal and request your further instructions. Consequently, it is essential that you advise us of any change of name or address.

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