I recently received my Certificate Of Registration Of Trade Mark. Why would someone bother you might ask. Well, the short answer is because registration of a business, company or domain name does not in itself give you any proprietary rights – only a trade mark can give you that kind of protection.
Registration of a trade mark (within Australia) gives the registered owner exclusive use of the trade mark throughout Australia. A trade mark can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these. It is used to distinguish the goods and services of one trader from those of another.
Within Australia, it's possible for someone to register a business name within one State and for someone else to register the same business name in another State. These two independent businesses could be for completely different markets or they could be for the same market. Without a trade mark, you aren't fully protected from the other business gaining recognition from (or even harming) your own brand.
You can apply for a trade mark using the IP Australia website or you can use one of the many IP professional's that are available. I chose the latter and used a company called Trademark Central. It does work out a bit cheaper doing it yourself through the IP Australia website, but it's also more work. The main reason I used an IP professional was that they perform all the necessary searches prior to submitting your application as well as drafting and managing the whole application process. The process was fairly easy and trouble free, albeit a lengthy one.
The whole process from my initial enquiry, took almost 8 months. After the initial paperwork is prepared and submitted, it can take anywhere from 3-5 months to pass the examination stage of the registration process. After that and before if can be fully registered, it must be advertised in the Official Journal. This is to give other people an opportunity to oppose registration of your trade mark and takes another 3 months. After this period has elapsed and if all the relevant fees have been paid, your trade mark will then be registered for 10 years.
If anyone opposes registration of your trade mark they must contact you giving the grounds for their opposition. IP Australia will also contact you and give you some brief information about the process you must follow to respond to an opposition. At the end of that process, the losing party may be ordered to pay some of the costs of the successful party.
The advertisement of your trademark may attract the attention of overseas companies writing or faxing you offering to include your mark in a (non-authorised) register. The unsolicited communications usually take the form of an invoice. The invoice of letter will try to mislead you into paying a fee in the belief that it is for international registration of your trade mark. Some of the companies involved in these scams are:
- Globus Edition SL, Palma de Mallorca, Spain
- IT & TAG, Switzerland
- Company for Economic Publications Ltd, Vienna, Austria
- INFOCOM, Schaan, Switzerland
- Company for Publications and Information Anstalt, Liechtenstein
These companies have no connection with IP Australia and have no official or governmental authority. The services they offer do not provide any official trade mark registration or trade mark rights in Australia or any other country. So always mark sure you read any correspondence you receive in regards to your trade mark, very carefully.
In my next post I'm going to be looking at some tips that will help you once your trade mark is registered.
Have you registered your business or “mark”? Leave a comment and tell me about your experience. I'd love to hear from anyone who's gone through the process in other countries.
Pingback: Top 10 Trade Mark Tips | Maddison Designs