What is a trade mark?

A trade mark (TM) is a way of identifying what you have made or what you do. It can be a logo or it could just be a name. It can include an image, colour, letters, numbers, sounds and symbols.

In fashion you can use a trade mark to protect your business logos and brand names.

Below are some famous examples of TMs from sportswear business Nike Inc.

A Word

Trademark Logo NIKE

A Phrase

A Symbol

An Image

Source: https://uspto.report/company/Nike-Inc/page/1

What is not a trade mark? 

Trade marks are distinct from a business name. Business names are registered with either the Australian Securities and Investment Commission (ASIC) or the Office of the Registrar of Indigenous Corporations (ORIC) and this does not stop others from using the same or a similar name.

A domain name for a website is also not a trade mark. A domain name is unique to you and is registered with a private internet company. A trade mark needs to be separately registered.

® or ™? 

Once your trade mark is registered, you can display the ® symbol next to it whenever it is used. This symbol is different to the ™ symbol, which can be used for any trade mark, even if it has not been registered.

It is illegal to use the ® (R) symbol if you have not registered your trade mark.

How can a trade mark help you? 

A trade mark is a badge of origin for your business, it’s your identity. It helps your customers differentiate your products or services from those of your competitors and it helps you protect and build your brand.

trade marks are one of the most used IP rights in Australia.

A trade mark registration offers you Australia wide protection and the right to stop other people from copying or using your identity. Registration can last forever as long as the trade mark continues to be used.

Things to think about before registering your trade mark? 

A trade mark needs to be different from any other trade mark registered in Australia. You can check you are not copying someone else’s trade mark by conducting a search at IP Australia here

When registering a trade mark you need to identify what specific goods and/or services you intend for it to be used on, grouped in classes. For example, a trade mark for a dress would be in Class 25. You can usually have the same TM as someone else if they are registered in different classes. You can see the classes at IP Australia here.

Make sure your trade mark isn’t descriptive. Be creative. Apple is a good trade mark for someone selling computers, but it would be a terrible trade mark if you were in the fruit business. Try to avoid names that explain something about your goods and services.

Unlike other IP rights a trade mark does not need to be a secret before you apply.

Trade mark tips from IP Australia

How to register a trade mark

In Australia you register your trade mark with IP Australia, the Commonwealth government body responsible.

Once you have done your search to check you are the first to register your trade mark, and you have identified the Classes of your goods or services you are ready to start the registration process with IP Australia.

IP Australia offer a service called “Trade Mark Assist” to step you through the registration process. You can access this service here. Note that you will be asked to register with IP Australia to complete this process.

Trade Mark Assist will take you through the following steps to apply for a trade mark:

  1. Enter the word, phrase or image that you want to trade mark
  2. Identify the Class(es) of goods or services that are relevant for you
  3. The system will conduct a preliminary search for similar items
  4. You enter your details and then apply for the trade mark
  5. You then pay the application fee, which starts at $250 for the Standard serivce or $330 for TM Headstart service (details here)

What happens next?

  • Your application for a trade mark will be made public soon after you apply.
  • An IP Australia examiner will then assess your application and either accept it or deny it. This usually takes three to four months.
  • Once accepted your application is made “open to opposition” for two months, meaning anyone can challenge it.
  • After this, as long as there are no oppositions your trade mark will be registered.
  • If your trade mark is not accepted you have 15 months to challenge the outcome.

You can talk directly with people from IP Australia for free on their Yarnline. Information on this is found here.

You can also seek assistance from a lawyer with this process.

More detail from IP Australia on this topic can be found here.

Can you use Aboriginal and Torres Strait Islander words in a trade mark?