You can register Letters, numbers, words, colours, a phrase, sound, smell, logo, shape, picture, or any combination of these. For example if you are a business owner and have a particular logo or a name that distinguishes that product from your competitors’ products, you may wish to trade mark the name of the product as well as the logo you have developed for it.
In Australia, a trade mark is applied at “IP Australia”. Once an application is filed at IP Australia, you will be assigned a case officer. The case officer will then examine the application and will either accept the application, or reject it. If an application is rejected in the first instance, you will receive a report that outlines the reasons for the rejection and what you can do to overcome it. You are given 18 months to overcome the issue.
The grounds the case officer can rely on to reject a trade mark application, as well as the ways you can overcome the issues, are specified in the Trade Marks Act. The most common grounds for rejection are:
1. Whether the mark is capable of being distinguished from other marks;
2. Whether the mark is substantially identical to or deceptively similar to an already registered trade mark or a mark that has already been applied for
Other marks that contains “scandalous matters”, or a mark where its use will be contrary to law, or resembles a sign that is prescribed in the regulation cannot be registered.
If you would prefer to find out whether your mark conflicts with other marks or adheres to the Act, you may wish to lodge a “TM Headstart” prior to the substantive application for a further fee. An examiner will consider your application initially and contact you in 5 days whether the application is likely to go through or not. However, the assessment made under the TM Headstart is not binding on the examiner and there is still a possibility that the application will be rejected even after a positive TM Headstart report.
The ways in overcoming the rejection may vary from swearing a statutory declaration and gathering evidence as to the use of the mark, or making submissions that the mark is not deceptively similar to an already registered mark. In any event it is extremely important that you understand the requirements you need to satisfy under the Act to overcome the rejection.
Prime Lawyers can assist you in carrying out thorough research prior to applying for a trade mark to advise you on the likelihood of your application being granted, as well as assist you in responding to an adverse report.
Once a mark is accepted to be registered, it will be advertised in the Official Journal of Trade Marks for three months. In this time, any third party is eligible to oppose to the registration of your mark (although this rarely happens). If there are no oppositions in the three months advertising period (or any oppositions are resolved), your trade mark will be ready for registration. A registration fee is payable at this time. Once the fee is paid, you have exclusive rights to the trade mark within Australia for a period of 10 years.
If you intend to use your mark overseas, you may also want to consider registering the trade mark in other countries.
If you require advice in applying for a Trade Mark or dealing with a Trade Mark dispute, call our intellectual property lawyers now on (02) 9521 2222. You can also send your enquiry online now and we will call you shortly.