Intellectual Property (IP) law and Trade Marks in Australia are becoming a really hot topic.
IP generally is becoming more and more valuable as businesses invest in technology and new ways of doing things, new trade marks to protect, new designs, new patentable inventions, technical know how, automation, inventive steps, processes and secrets worth protecting.
The Internet is the driving force behind most of the change and for some businesses e.g. AirBnB, Facebook, Uber etc – almost their entire balance sheet is IP.
Having a registered trade mark allows you prevent others from infringing your intellectual property rights. E.g. stop someone else from confusing the market as to who is the rightful owner of that mark.
We’ve put together a list of our most frequently asked questions around Trade Marks and Intellectual Property, so you can get an understanding of what it is, how it applies to you, and how to protect your business.
Trade Mark FAQ in Australia
- What is a trade mark?
- I have a business name? Isn’t that enough?
- Why is intellectual property important?
- Do I need to register my trade mark?
- Why would I need one?
- What are the different classes?
- What happens if someone uses my trade mark?
- What’s the point of using the Head Start process? Should I bother?
- What’s the benefit of getting a lawyer to do my trade mark?
- How much does it cost?
- How long does it take?
- Does my trade mark protect me in other countries?
What is a trade mark?
A trade mark is something you use to distinguish your goods and services from other providers.
It tells you apart from them so that customers aren’t confused between you and another business. Think about all the bigger brands out there and what you’ve seen used in advertising from one brand to another brand.
For a small business, there are commonly 4 different types of trade marks.
- A business name;
- A logo;
- A slogan, by-line, tag-line, slap line;
- Names of products / programs or some service you deliver that you want to protect.
These aren’t necessarily in order of preference in terms of protection. A business could have a generic name but seek to protect their logo first or their tag line because of the relative importance of it or perhaps the amount of time, effort and cost in producing the logo for instance. It really is a case-by-case basis and some quick advice from a professional is invaluable in most instances we’ve found after advising 1,500+ small business in the last 3.5 years.
I have a business name? Isn’t that enough?
Just because you have a business name, doesn’t give you the right to use it. I know that sounds really strange but only a registered trade mark will give a business the most protection needed to trade.
A business name is a nickname essentially and distinct from a legal entity.
The legal entity might be for instance Bob Smith T/as Bob the Builder, or Bob Smith Pty Ltd t/as Bob the builder (if a company). The individual or company owns the business name, and can own many others.
We have seen so many cases where a business that starts to trade (sometimes even for a long period of time), then finds out that they need to stop trading with the name because they are infringing someone else’s trade mark. It is an extremely serious issue if it happens and is in most circumstances a very expensive exercise.
Why is intellectual property important?
As we said earlier in the article, Intellectual Property (IP) law is becoming a really hot topic.
IP generally is becoming more and more valuable as businesses invest in technology and new ways of doing things, new trade marks to protect, new designs, new patentable inventions, technical know how, automation, inventive steps, processes and secrets worth protecting. The Internet is the driving force behind most of the change and for some businesses e.g. AirBnB, Facebook, Uber etc – almost their entire balance sheet is IP.
Even medium and smaller busineses are investing heavily in IP as they see this is the new currency of the digital age. It is what can make a smaller business compete with larger ones and even outgrow them rapidly, if that IP is protected.
It’s becoming really important in this day and age where we’ve not only got a scarcity of names happening but also more businesses doing more global business and protecting their IP in international markets as the knowledge in this area grows more and more.
Having registered trade marks in Australia allows you prevent others from infringing your intellectual property rights. E.g. stop someone else from confusing the market as to who is the rightful owner of that mark.
Do I need to register my trade marks in Australia?
There is no legal obligation to register your trade mark. As soon as you use your mark (most commonly business name, logo, slogan/ tag-line / slap-line or product names), you have what is called inherent rights which are common law rights.
The reason why you register your mark with IP Australia is so that you have much greater protection. Your rights in the mark are easier to enforce. IP Australia is the central repository of all intellectual property including trade marks in Australia.
Why would I need one?
You can use a registered trade mark as a shield or a sword. A shield to stop others from registering the same or similar mark underneath you on the IP Australia register. i.e. first come, first serve.
A sword to be able to rely on to stop others from infringing your IP and misleading the market, confusing potential customers or even taking profit away from your business. We’ve seen it happen a lot: derivative product names, logos etc. Especially now that businesses are starting to become very savvy about their rights and becoming very protective of their brands.
With intellectual property becoming more valuable in most businesses (and in some instances, their entire asset), it’s really starting to become valuable property.
What are the different classes?
IP Australia clumps together similar goods and services in different classes. This is so that for instance an accounting firm can co-exist on the IP register and not offend a big food store just by having the same or similar name. It means that many businesses can co-exist and not have a monopoly over a business name for instance if it’s genuinely not going to confuse the market by having the same or similar name, when they operate in a completely different market.
There are a lot of classes with thousands of activities (you can just imagine how many businesses are doing what types of activities).
The downside is that you have to pay per class, per application. However in most instances we find businesses will only tick 1 or 2 classes of business, but in some circumstances 3 or 4.
What happens if someone uses my trade mark?
First things first. Protect the evidence. Screenshot any offending material, evidencing how many people have viewed the material (e.g. on social media), search for all offending material by the same business/person and do likewise.
Secondly, seek legal advice straight away. The longer you wait, the worse it will get and time is of the essence.
Call/email us as soon as possible so we can go through it together and work out an immediate strategy.
What’s the point of using the Head Start process? Should I bother?
The Head Start application is a great way of speeding up the examination process (usually takes a couple of months otherwise) and you get to know within 5 business days whether or not IP Australia has any issues with the mark, or if IP Australia thinks anyone else has any issues with the mark.
It’s a confidential process so, if there are massive issues with the mark, you can determine what to do with it (either modify, proceed or abandon) without having gone down the track and then be told that you can’t register the mark in its current form.
We recommend the Head Start process now for most clients, unless they’ve been using the mark for a very long time or there is a competitor on the scene and they need a filing date immediately to stop them from using the mark or to get there first and protect.
What’s the benefit of getting a lawyer to do my trade mark?
Like anything, if you don’t do something every day, there’s a greater chance you’re likely to get it wrong than having someone that does. Also, it’s probably not your highest and best use of time. E.g. I get my accountant to do our tax returns.
The situation with trade marks is that you’re not allowed to substantially amend the trade mark (unless you narrow the scope) after you’ve filed it, so if you muck it up, you basically have to do the whole thing again and start from scratch and pay all the fees again.
It’s not that expensive and at least you know that the mark you register is going to give you the protection you need, or as much as you can afford. We’re practical when it comes to these matters.
Should I trade mark my business name, or my logo or both?
It depends, however in most circumstances securing the name is the first port of call given that most of the investment in IP is around your brand “name” as opposed to a logo or a slogan/by-line/tag-line etc.
We recommend that you get your name trade marked first as soon as you’re set on the name and happy with it. It takes a lot of time to come up with a name and once you finally have determined that this name is the right name for your business. Then it is extremely wise to protect it as soon as possible for a couple of reasons. Firstly, getting the registered trade marks in Australia now ensures that you have the maximum rights available to stop someone coming along afterwards and copying your name and confusing the market.
You might think, what’s the chances of that happening?, but believe me it does. Even competitors have been known to try and frustrate their opposition by registering similar names and releasing products with same or similar names in order to confuse the market and frustrate you. We have seen it happen too many times.
Names are becoming more scarce and a lot of businesses are starting to take a very active interest in securing their intellectual property. The cost of potentially going through a rebrand should be a scary proposition for any business owner. Not just the cost of having to change all your branding, documents, contracts, new business name registrations, domain names, business cards, stationery, flyers, social media handles – let alone the business frustration and interruption!
It’s much safer to get your trade marks in Australia done, and get it done now. It’s not as expensive as you might think. Small investment now to protect your business down the track.
Logo and tag lines
When you’re happy with your logo, same advice applies. When you’re set on your tag-line, same again. Register your Trade Marks in Australia as soon as possible. We encourage clients to get us to do a head-start application for the name, logo, by-line, tag-line etc first, before you go and start to use it in the market so that you can be confident that no one else should have an issue with the mark being used. Especially when you go to so much time, effort and expense and marketing.
Composite Trade Marks
You can combine your name and logo together in what’s called a composite mark. In some circumstances, it might be worthwhile to do from a costs perspective, especially if you tick a few classes (remember you pay per class, per application).
However, from a legal perspective, you whittle down the individual elements of the mark (i.e. less strong in terms of value) when you combine them.
Our advice is usually that it’s best to separate the individual elements of a mark and have maximum protection from a legal perspective. Of course, financial considerations will need to be made given you are paying for a separate application, as IP Australia views them as separate pieces of intellectual property.
How much does it cost to register trade marks in Australia?
We charge a flat fee $850 + GST + government charges.
Be very wary of those law firms or IP attorneys that charge per class. We understand why they would do this in that it takes a bit longer for each application when extra classes are added and activities need to be identified. However, in our experience, it doesn’t truly represent the real time involved. And it additionally provides further disincentive for clients to get the protection that they need.
The government charges are $330 per class per application for a headstart application and $250 per class per application for a straightforward application.
How long does it take to get trade marks in Australia?
For standard trade mark applications, it usually takes around 7.5 months from the date that the trade mark application is filed to the date that the Certificate of Registration is issued.
That might seem like a long time to anyone to obtain protection. But you actually obtain protection as soon as you obtain the filing date of the application. So you have more rights as of that date.
The Head Start application speeds up the examination process to 5 business days. But the entire process is still the same amount of time. It just speeds up the initial examination of the mark. And after 2 months, they simply do a “top-up” search to make sure nothing has changed in those 2 months.
Do my trade marks in Australia protect me in other countries?
Trade marks registered through IP Australia only protect your trade marks in Australia. If you want protection in a particular jurisdiction (i.e. country), you must apply for protection in that particular country. i.e. just because a business has a trade mark in the USA, doesn’t mean they have any protection here necessarily. They will need to be trading here or register a trade mark here in Australia to obtain that protection. Same goes for Australian businesses in other countries.
It’s important that you file a trade mark application in each country where you trade. Australian businesses must file applications fore trade marks in Australia first, before filing in any overseas countries.
Last updated 17 Jan. Stock photography from Pexels.