Allens

Trade marks

Trade marks, which distinguish one trader's goods or services from those of another, are valuable commercial tools that protect the reputation and goodwill in a trader's business and protect the public from counterfeit goods or unauthorised services.

Trade mark protection is generally available in Australia for "signs" which can distinguish the goods or services of a particular trader in the marketplace, such as words, numerals, letters, devices, logos, shapes, and even scents and sounds.

For some information on the procedures involved to protect your IP, please see our FAQ and application process pages.

Benefits of registering a trade mark

Registration of a trade mark is not mandatory, but does confer very substantial commercial benefits. For instance:

  • A trade mark registration confers nationwide rights (in most cases).
  • A registered trade mark will be an obstacle to any subsequent application by a competitor to register the same or a similar trade mark.
  • The Trade Marks Act confers legally enforceable rights upon a registered trade mark that make it far easier, more certain and less expensive to enforce rights in a registered trade mark than in one that is not registered.
  • Rights in an unregistered trade mark only arise where a substantial reputation has been developed in the relevant trade mark. To enforce these rights, you must prove a substantial reputation in the trade mark, a very time-consuming and expensive task.
  • Unregistered rights only exist in the geographical area in which such a substantial reputation can be shown to exist.

Trade mark services

Our trade mark team can help you along every step of the way, including:

  • conducting searches to establish registrability or likely availability to use a trade mark;
  • filing trade mark applications (including advice on the specification of goods or services, or both) in Australia and overseas;
  • responding to examination reports;
  • trade mark oppositions;
  • renewal of trade mark registrations;
  • portfolio management;
  • infringement and registrability opinions; and
  • Intellectual Property audits, advising you of appropriate screening protocols for your registrable trade marks and infringement risk management.

Basic filing requirements

In Australia, no power of attorney or authorisation of agent form is required.

The following information is required to file a trade mark application in Australia:

  • the applicant's full name and address;
  • a clear representation of the trade mark (preferably in electronic format if a device or logo);
  • the class(es) in which the application is to be filed;
  • a description of the goods and/or services; and
  • details of any convention priority claim.

Taking your intellectual property further

Our patent attorney practice works very closely with our associated law firm, Allens, to provide you with advice on all aspects of trade marks. Allens specialised trade mark lawyers can help you to take your trade marks further in both the commercialisation of your brand and the enforcement of your trade marks, as well as advise you on how to defend an infringement allegation or to remove a competitor's trade mark registration.

Considering challenging an Australian trade mark?

There are a number of options for challenging a trade mark on the Register. Different strategies need to be finely balanced against what has occurred during examination of the trade mark application, and a party's overall commercial objective and position.

  • Opposition Trade mark applications that IP Australia has accepted are advertised for a period of two months, during which time third parties can oppose registration of the mark on a number of grounds. These include: opposing on the basis of a prior reputation in a similar mark; because of the existence of a prior conflicting mark on the Register; that the mark lacks distinctive character; that use of the mark is likely to deceive or cause confusion; or that use of the mark would be contrary to law.
  • Revocation of acceptance If IP Australia has accepted a trade mark because the Examiner was not made aware of a potential issue with it during examination, a third party can seek 'revocation of the acceptance' of the mark, rather than opposing registration.
  • Revocation of registration For one year after a trade mark is registered, a third party can apply to revoke registration of the mark, on the basis that it should not have been registered because of an error or omission that resulted (either directly or indirectly) in the mark proceeding to registration, because of some obligation under an international agreement, or because of special circumstances that make it appropriate to revoke the registration.
  • Rectification By pursuing a rectification action before the Federal Court of Australia, an aggrieved party can cancel a trade mark that was invalidly registered.
  • Non-use removal action If more than five years has passed since the filing date of a registered trade mark, third parties can seek removal of the registration, if it has not been used for a continuous period of three years.

Before challenging an Australian trade mark, it is important to assess the merits of the various options that are available, in light of your commercial objectives.

Allens can assist you at any stage of the registration process and provide you with a strategy that best meets your commercial needs. Please contact us if you require further information on trade mark challenges in Australia or New Zealand.

 

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Our associated law firm Allens operates in alliance with Linklaters LLP.