The way to protect a business name or company name is through registration as a trademark. From May 2012 a national business name registration system will be in place in Australia (versus the current ‘state wide’ business name registration), making it more important than ever to ensure that your business name, or company name is protected and is recognised as yours. How would you feel if someone opened up shop down the road from you, selling the same sorts of products and by a similar name?
A trademark is most commonly known as a brand. A registerable trademark can be a word or words, an image or images, a slogan, a colour, a scent, a shape or any combination of these things, so long as when they are applied to goods/services they distinguish them as originating from a particular business. It can therefore be more difficult to register a trademark if it’s too similar to an existing trademark or if it is too descriptive or made up of commonly used words that others would legitimately need to use during the normal course of business.
What are the rights of a Trademark Owner?
The owner of a registered trademark has rights that are not achieved through other registrations, such as:
- The right to use the trademark for specified goods/services;
- The right to authorise others to use the trademark for specified goods/services (such as licensing the use);
- The right to take action against people using the same, or confusingly similar, trademark without permission.
How do you register a trademark?
The first step should always be to have a trademark search conducted. I would encourage this to occur before registering a business name or company, or as closely afterwards as possible. If you register a business or company that is too similar to a registered trademark then you could be infringing someone else’s rights as soon as you start promoting your new business or company name. The registration process in Australia for trademarks is a long one – it takes a minimum of 7.5 months from filing an application to securing protection. A trademark search can identify whether the name is ‘safe’ to use, and what the chances of securing registration are.
Once a search has been conducted and positive results are found (or if you choose not to have a search conducted. An application seeking registration is filed with the Trademarks Office in Australia. At this stage, you must advise the trademarks office as to the goods/services you brand (or intend to brand) with your trademark. All goods and services are split into categories that are nominated at the time you file your application. There are 45 of these categories to select from, and you will pay a fee per category that you are applying under. For example, if your new name will be a clothing label then you require one particular category that covers clothing. If the same name will also be the name of your shop, and therefore will brand a retail service, a second category is required to ensure protection when the name appears as the brand of clothing or the brand of retail services.
Once your application is filed, the government department will examine it to ensure it is registrable, which will take around 4 months. Once examination is complete they will issue a report if there are any problems to address, or will issue a notice that the trademark is approved for registration. In the event you receive a report you will have 15 months to respond and address any problems to bring your trademark into order to be approved.
The notice of acceptance will advise you of the date your trademark will be published in the Official Journal for the purposes of third party oppositions. If no-one objects to your trademark being registered during the prescribed period of 3-months then your mark can become fully protected once a final fee is paid (per category).
How long does trademark registration last?
Initially for 10 years (no annual renewal fees or requirements). You may renew each 10 years. Also, be mindful that if a trademark remains unused for a period of time it may be vulnerable to removal.
Author: Jacqui Pryor, Director of Mark My Words Trademark Services Pty Ltd
You can contact Jacqui via her website, or by email to Jacqui@mmwtrademarks.com.au. After 13 years of experience and completion of a graduate certificate in Trade Mark Law and Practice Jacqui is able to answer any of your questions concerning trademark registration in Australia or overseas.