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If you own a business or a product, you’ll have a sense that you’ll need to register it as a trademark to give you the protection you need under Australian intellectual property law. There’s no need to be daunted by this process, but it is a necessary one for every brand, product, or service provider to undertake.
We recently spoke with Jacqui Pryor, a registered trademark Attorney from Australia who owns Mark My Words Trademarks. Here’s what we shared with us in terms of what you need to know about the process from start to finish.
Determine if you have a trademark or not.
It seems logical, but this is necessary to make sure you’re not wasting your time. Under the Trade Marks Act of Australia, a trademark is precisely defined. It’s determined to be a sign that is used/intended for use to distinguish goods or services. To qualify, it also needs to be used when trading between two parties.
This is a very broad definition, but it can cover words (a single word or group of them), the logo of your company or a graphic. It could even be an associated shade, smell, sound, or packaging. The thing to remember is that if your sign (or mark) uniquely identifies and distinguishes your products or services, it can be trademarked.
Conduct a trademark search
This step will help you establish if there are already marks out there that are similar to yours. You want to make sure that your trademark application is successful. To improve the odds, ensure your mark is as unique as possible. It needs to distinguish itself from your competition within the marketplace. If you think it may cause issues, take it back to design and branding stages and rework it until you are positive it wouldn’t cause confusion with customers, or infringe on the rights of other trademark owners. Remember, the more unique your trademark is the most valuable it is too.
IP Australia has a range of search tools you can use to do a trademark search. But it can be a bit complex and confusing. A trademark expert can be hired to conduct the searches for you. They will perform a cursory search first and follow this with detailed searches of a range of Australian trademark databases. There are other beneficial services they offer, such as undertaking a market search to identify trademark trends that apply to your industry.
Identify your trademark class
A trademark class is used by IP Australia to establish the nature of your products or services. When you file an application, you need to specify what the products or services you offer are according to one of 45 classifications that are recognized internationally. You may choose to nominate a number of these classes in your application to ensure you are protected across multiple industries.
A trademark professional can also offer you valuable guidance in this regard. If you choose to hire them to prepare and file your trademark application on your behalf, they will inform IP Australia of the class numbers your products or services fall under. They will also provide a description of your products or services, which is a requirement. This assistance will help ensure your mark is registered quickly and without any issues. If your application is opposed, they will also help you with the processes needed to address this.
Wait out your opposition period or reapply
When your trademark application has been filed, it undergoes an examination period, which can take about four months. After this, you will be supplied with a notice of acceptance or adverse report laying out the grounds for rejection. If there are no issues, you will be given the notification of acceptance for a potential registration. You must then wait for a three-month opposition period to end, which allows others to oppose your application if they feel your mark infringes on their property rights.
If you are given an adverse report by IP Australia, there is no reason to panic. It doesn’t mean your application has been rejected outright. It is merely giving you the information you need to fix the issues highlighted in the report. It may mean you need to change your mark because it is too similar to one that is already registered. Or, you may be asked to provide proof of your current or intended use of it. Again, a trademark attorney is best equipped to take you through this process to improve your chances of achieving registration.
Pay your registration fee
If your mark application is uncontested during the opposition period, your registration will be completed, and you will become a trademark holder, with the associated rights this affords you. You’ll be required to pay a registration fee, or your trademark attorney can do this on your behalf. With this final step complete, you will be issued with a trademark registration, which ensures trademark protection for a decade.
Jacqui Pryor is a registered trademark attorney based in Australia who provides trademark registration services, searches and other matters regarding trademarking. For more information be sure to visit Mark My Words Trademarks