Understanding Trademarks – Common Questions

A trademark is the public identity of your product or service, and forms a significant part of your brand. This is a way of distinguishing your brand, and thereby serves as a valuable marketing tool. There are many misconceptions associated with the use of trademarks. We have put together answers to a few common questions that we hear about using trademarks.

What is a trademark?

A trademark is not just a ‘logo’ – it can be a letter, word, phrase, number, sound, smell, shape, logo, picture, movement, aspect of packaging, or combination of these things. A common misconception is that a trademark is the same thing as a business name, company name or domain name. This is incorrect for reasons listed below:

  • A business name is the name under which your business operates and is connected to your Australian Business Number (ABN). A business name does not give you legal rights to that name. This means that if someone else uses your business name for their business, you don’t have any rights to stop them.
  • A domain name refers to a business’ website address. This is the name that people use to exist online, and is the address that customers or clients will use to access information about the business. A domain name allows you to use the name online.
  • A company name is the name of the type of legal entity that will usually have the words ‘Pty Ltd’ at the end of its name. A company name identifies the legal entity that owns the business, as distinct from identifying its products and services. It is possible to register a trademark that is the same as a company’s name, but their different registrations are to achieve different objectives, for example, a registration as a trademark is to brand a product or service whereas registration of the company name is to identity the company legal entity.
  • A registered trademark creates a legally enforceable right to exclusive commercial use to sell goods and services under the trademark. It is used to identify a product or service in the marketplace and distinguish it from other products or services. A registered trademark can carry the ® symbol, which puts others on notice to respect your trademark.

Does my trademark need to be registered?

A trademark does not need to be registered, however it is prudent to do so. This is due to the fact that unregistered trademarks have limited protections under consumer legislation. If you do not register your trademark, a competitor could apply to register your mark as a trademark and you would have to defend your rights if you wished to retain them which can be expensive and time consuming. This could result in costly rebranding and losing your position in the market. Furthermore, if someone else has already registered the same trademark as yours, they can take legal action against you if you infringe their IP rights.

How do I apply to register my trademark?

A trademark can be registered online with IP Australia or by post. There are multiple steps required in this process, including a search to ensure there are no other similar trademarks already being used and an application form which needs to be completed and submitted for assessment. It is often recommended that a solicitor is used to ensure that this application form is submitted correctly, as only limited changes can be made once the form has been submitted.

After your form has been submitted, an examination report will be issued which will set out IP Australia’s findings. After two months, if there are no oppositions or reasons to revoke the trademark and any required fees are paid, your trademark will be registered. It usually takes three to four months to register a trademark from the day the application is filed. There are fees charged by IP Australia for registration, which can be viewed on their website.

How can I lose my trademark?

A trademark must be actively used in the course of trade. If you do not, it can be removed on the grounds of non-use. Anyone can apply for removal of a trademark for non-use. This can allow a third party to gain registration of the same mark. If your trademark is officially opposed by someone, IP Australia will send you notice and you can defend your trademark’s removal.

How long will my registered trademark last?

Your trademark registration lasts for ten years from its filing date. You can renew your trademark registration between 12 months before the renewal is due, or up to six months after. There are fees charged by IP Australia for renewal, which can be viewed on their website. You will need to pay extra fees if you renew after the due date.

Want to know more about trademarks? Looking for an experienced solicitor in Newcastle, Sydney or the Hunter to conduct an Intellectual Property Law audit for your business? Call us on (02) 4929 7002, email us or complete an enquiry form.

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