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4 Things You Need to Know About Trademarks

4 Things You Need to Know About Trademarks

If you’ve got a business, or are planning on launching your dream start-up, you’ll have thought about a name to take to the marketplace. One of the key things you need to consider is whether your name is available to use and whether or not to register a trademark. Here are four common questions about trademarks that we receive frequently at from clients:

Do I need a trademark?

Let’s start by defining what a trademark is. A trademark is a sign that is used to distinguish the goods or services between traders. When this trademark is registered, it gives the owner the right to use that sign/mark for specified goods and services. If another party infringes on it, they have the legal right to take action. Given this definition, a trademark exists through creation and use but for safest protection, it should be registered.

A trademark can range from a word or phrase (as in the name), but it can also cover other things. Logos being one of the most common. A trademark can also be an image, shape, packaging, colors and more used to distinguish the goods/services from similar products of others. As long as it qualifies as a sign that is used to identify and differentiate the goods or services of a trader, it will be considered by IP Australia. Registered trademarks can be bought, sold, or licensed to another party as they are considered to be property.

Marks that are too descriptive are unlikely to get the green light to be registered. The Trade Marks Act 1995 prevents the registration of the following:

  • Purely descriptive words.
  • Marks that don’t adhere to the law or are considered to be scandalous by nature.
  • Emblems that already fall under the protection of other forms of legislation. An excellent example of such protection would be the Red Cross emblem. 

Can I run my business without a trademark?

Yes, you can, but you need to be aware of the risks you carry. Registering a trademark gives you control over your brand assets, meaning that you have the legal right to use elements of your brands such as the name and logo as have been registered. Without registering your trademark/s competitors could use a similar name or logo, and you may have limited, or no, legal grounds to stop them.

Without a trademark, you do not have the legal guarantees in place that you have the right to use them. This means you are at risk of infringing on another business’s trademark (with your knowledge or not). If you don’t have a good defense for this trademark infringement, you could be directed to change the name of your business or the logo. All that brand equity you have built up will be gone in an instant, and you’ll need to rebrand and relaunch.

Small businesses are perhaps in a more difficult position when it comes to trademark infringements. If they come up against a more prominent company, they may not have the legal or financial resources to try and fight a claim. This is why even small startups must carry out appropriate due diligence before commencing the use of names and should, when able, register trademarks. A business name can be registered with the Australian Securities and Investment Commission (ASIC), but this doesn’t offer any ownership over the name. Notably, ASIC requires you to tick a box confirming you understand this very thing and that encourages you to consider trademarks when you start a new business name application form.   

What are the benefits of international trademark registration?

As an Australian trademark holder, you may be eligible to apply for international trademark registration in countries that are members of the Madrid Protocol. (You may also be able to file national applications to other countries if not members to the Madrid system).

The international application provides a simplified means to obtain international protection of trademarks. You can record certain changes all in one place, as well as add further countries if needed.

With international registration under the Madrid Protocol, your trademark has the same protection as national trademark holders have in their own country within the countries you have nominated.  The international trademark registration lasts for ten years and can be renewed for valid countries.

What can I do if I get an adverse report?

In Australia, an adverse report is an objection rather than rejection. The report will explain why your trademark is not currently acceptable for registration. You have 15 months from the issue date to respond and try and overcome whatever the issues are. A trademark attorney will be able to help you with the response. In some instances, the response will require you to file evidence of the use of your mark to demonstrate why it should be accepted.

Once the response has been filed, you can expect one of these outcomes. If your response didn’t address the problems, you’ll receive a further report. Note that the original 15-month deadline does not change in the event of a second report. If ultimately you cannot convince the examiner of your application that your trademark should be accepted, in some circumstances it may be appropriate to request a hearing on the matter. Your trademarks attorney can advise on your options.

If your response resolved the objections, your application will be accepted. A two-month opposition period then kicks in, which allows other parties to object if they feel your trademark should not become fully registered/protected.  Once the two-month period is up, and if you haven’t had any oppositions to your trademark lodged, it will be registered, and you will be afforded the rights as the trademark owner.

Author Bio:

Jacqui Pryor is a registered trademark attorney based in Australia who provides trademark registration services, searches and other matters regarding trademarking. For more information be sure to visit Mark My Words Trademarks

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