Why do I need a trademark and how do I register for one?

Why do I need a trademark?

Intellectual property refers to your business’ intangible creations of human intellect. But what does that actually mean? Your brand’s value will continue to grow as it becomes more recognisable to the public and your prospective clients. Therefore, registering a trademark can give you legal protection over the components that make up the identity of your brand including unique logos, taglines and colours.

Key points to remember

  • You will receive legal rights to the trademark.
  • You will need to be diligent in checking to see if your trademark is being used improperly by others.
  • A trademark can provide your business and brand with protection, and also give you a competitive edge.
  • Research your own industry and ensure you are not infringing on anyone else’s intellectual property before you register your trademark.

What is a trademark?

A trademark protects a particular type of intellectual property and can be a:

  • name
  • logo
  • colour
  • phrase
  • word
  • shape

When registering something as a trademark, it needs to be distinctive and able to can distinguish the goods or services of one business from another. You can register for a trademark and search for existing trademarks worldwide at IP Australia.

Who needs a trademark?

You will need to register a trademark if you want to receive legal rights to a certain type of intellectual property that your business has created. Registering a trademark can give legal protection to the components that make up your brand.

If you do not want another business to have the same name as you, you may register your brand name as a trademark if it is not already an existing trademark. It is important to note that registering your business name does not give you the exclusive right to this name; other businesses can still take this name if they wish to.

Once you have registered your business name as a trademark, you are then able to use the ® symbol on your products, services, website and wherever else your brand name appears. This also lets others know that you have registered your property as a trademark.

How do I register for a trademark?

If you have decided that you want to register your business name or a particular component of your business as a trademark, please follow these steps:

1. Preliminary check: There are a few things to consider before you register something as a trademark: 

  • Is the thing you are trying to register as a trademark a common or prohibited word, phrase or sign?
  • Have you checked the trademark database to ensure that this does not already exist as a trademark?
  • Is the trademark distinctive enough to distinguish your goods and/or services?
  • Are you comfortable with having your address published if your trademark is accepted? If not, a PO Box is valid as a trademark address.

2. Understanding goods and services: When you apply to register a trademark, you must provide a description of the goods or services you intend to use your trademark on. These goods and services are categorised into one or more classes. The trademarks classification search on IP Australia provides a list of goods and services classes that you can choose for your trademark.

3. Search high and low: Perform a detailed search to ensure that the trademark is not pending or does not already exist or is pending. If the trademark already exists, it may be possible to have more than one trademark registered in different product/service classes. For example, DOVE is a registered trademark for soap in class 3 and chocolate in class 30.

4. Apply: There are a fewcouple of routes you can takeoptions when you are ready to apply for your trademark:

Methods to file an application for a trademark
TM Headstart Standard Application for a Trademark
What
  • Provides you a pre-assessment with an IP examiner before you formally apply through online services.
  • IP Australia
  • Formally apply through online services.
  • IP Australia
Cost
  • Pay in two parts. 
  • Part 1 is for the pre-assessment to see if the trademark is likely to encounter any problems before publicly filing.
  • Part 2 is after the assessment to formally file your application for a trademark.
  • Starts at $330.
  • Can save you money in the long run because you get the pre-assessment and 
  • Starts at $250.
  • File for application immediately.
  • Non-refundable.
Timeframes
  • Receive feedback within 5 days after lodging the pre-assessment.
  • Receive report and results 13 weeks after formally filing an application.
  • Receive report and results 13 weeks after formally filing an application.

5. Application outcome: If your trademark application is accepted, IP Australia will notify you in writing via online services. 

  • Your trademark will then be advertised as ‘accepted’ and be open to opposition for a period of two months. 
  • During this time, someone else can challenge your trademark registration for a number of reasons like if they think it is too similar to their own.
  • After two months, if there are no successful oppositions, your trademark will be registered.

Commercialise your trademark through licensing

After your trademark is registered and you hold the legal rights to use it, you can even license it to other businesses who may want to share association with your business (and use it in their events, for example). When you license your trademark to others to use, you retain ownership and maintain control over the brand.

When do I need a trademark?

It is important to weigh up the costs of the trademark especially when you are starting your new business and have other costs to take into account. If your intellectual property is innovative and trailblazing and you want to protect it from being used and registered, it will be best to register as soon as possible.

If you decide to wait  a bit before registering as a trademark, you may implement other measures to prevent infringers of your intended trademark by using the ™ logo next to the applicable object. Though it is not a registered right, the ™ symbol acts as a deterrent to others to register it.

Legal advice​

If you are considering registering for a trademark and are unsure whether if you are able to, you should seek legal advice. Legal Kitz business specialists can assist with ensuring that your intellectual property is eligible to be registered as a trademark and if it already exists or is pending registration.

Click here to book a FREE consultation with one of our highly experienced solicitors today or contact us at info@legalkitz.com.au or by calling 1300 988 954.

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