The Importance of Registering your Name as a Trade Mark: Do Your Homework and Get in Fast!

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Imagine this.  You have started your own business, picked the perfect name and done all the right things including registering that name as a Business Name.  Your first year of business has gone well, until you discover a rival company using your name to market their business.  You have secured the business name, which means that no one else can use that name….right?  Wrong, unfortunately, registering a business name does not give the owner any exclusive rights to use the name or preclude other traders from using the name and continuing to use the name, where the proper searches have not been conducted, may in fact be infringing a registered trade mark.

It is an offence under the Australian Consumer Laws to use another person or company’s trade mark and it is important to do your homework before embarking on any business venture.

Registering a trade mark is the only way to be certain that you have the sole right to use, licence, assign, or sell the name of your business and prevent other traders from using the name in relation to the goods and service for which the trade mark is registered.

If a Business Name doesn’t give me exclusive rights in the name, then why do I need one?

A business name is used to identify your business only and does not give you exclusive rights in the name.  If you operate your business as a sole trader, partnership or a trust, then you are required by law under the Business Names Registration Act 2011 (Cth), to register that business name through the Australian Securities and Investment Commission.  The only exception to the requirement to register a business name is where your business trades under your first and surname (or your partner’s first and surname), or where you operate your business through a company, which is registered on a separate company register.

If you have any queries regarding business names or require assistance to register a business name, then please do not hesitate to contact us.   

Registering a Trade Mark

For many businesses their name and brand are their most valuable asset and it is therefore essential to secure that.  A registered trade mark is also as saleable asset, making your business more enticing to any potential buyers, should you ultimately wish to sell your business.

The Trade Marks Register is a national register that works on a priority system.  Once a trade mark application is filed and subsequently accepted and registered, that mark will have priority from the filing date, meaning that any subsequent applications seeking registration of a trade mark that is the same, or deceptively similar, in relation to the same or similar goods and/or services to your registered trade mark will be rejected.

It is therefore highly important that registration of any name/brand be applied for as soon as possible so as not to be gazumped by another application.

Trade Marks are not only names but also, logos, aspects of packaging, colours, shapes, scents and even sounds.

To achieve registration, the mark applied for must be distinctive and cannot be the same or similar to an earlier registered trade mark, in the same or similar class of goods and services.  Trade Marks are categorised into 34 classes of goods and 11 classes of services and it is important that careful attention is paid when drafting any trade mark application to ensure that the goods and services accurately reflect those of the business to which the mark relates.  The risk in applying for a trade mark for good and services that the trade mark is not used for, is that the mark may be removed for non-use.  Essentially, the system is one of “use it or risk losing it.”

A trade mark application will go through a formal examination process where a trade marks examiner will review the application to determine whether it is distinctive enough to be registered.  Where a trade mark is the same or similar to an earlier registered trade mark, the application will not be accepted.  Once an application has been accepted, the application will be published in the Australian Official Journal of Trade Marks, following which a two-month opposition period will commence.  During the opposition period traders will have the ability to oppose the registration of a trade mark, however less than 2% of accepted trade mark applications are opposed.

Provided there is no opposition, the trade mark application will be registered.  The entire process takes a minimum of seven months.

Once registered, a trade mark has priority from the filing date and the owner has the ability to exploit the trade mark and take action against any unauthorised use of the mark from that date.

To keep a trade mark, it must be renewed every ten year by payment of IP Australia’s renewal fees.  If renewed every ten years and the trade mark continues to be used in relation to the goods and service applied for, then a trade mark will remain on the register indefinitely.

If you have any queries about trade marks or require assistance to register a trade mark, then please do not hesitate to contact us.

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The content published in this Blog is in the form of academic papers and the opinions expressed herein are generalised. The information provided is for educational purposes, not specific legal advice.

The application of any principles referred to can alter from case to case and accordingly you should seek independent legal advice in respect of your individual circumstances.


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