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If you do not register your intellectual property, you cannot prevent other traders from registering their own goods or services under you own mark: you can, in fact, be forced to change your mark altogether. Register a trademark in Australia to ensure the protection of your intellectual property.

Trademark Eligibility

In order to be eligible for a trademark, you must be:

  1. An individual
  2. A company
  3. An incorporated association
  4. Or some combination of these

You cannot use your business or trading name to file an application. You must include your name as the owner on your trademark application to be able to apply. If your mark is owned by a corporation, you must file the application in the corporation’s name. Similarly, a trust must submit the names of the trustees in the application. An association can apply for a collective, rather than a singular, trademark.

You are required to nominate a class, or classes, or goods and services that your trademark is related to in your application. This is so your trademark protection is tailored to your unique business requirements.

Your application must be detailed, accurate, and descriptive of your trademark. A trademark professional can fill out and file your application on your behalf: this way, you can be sure that your application is filled out correctly. You should also conduct a trademark search before you file your application to ensure that your mark does not conflict with other pre-registered trademarks. If your mark is similar or identical to another registered mark, your application will be rejected, or the other party may take legal action against you for infringement.

Conditions for Acceptance

Before you can register a trademark in Australia, examiners must determine whether or not your mark is suitable for registration. You should conduct a trademark search to ensure that your mark does not conflict with other registered marks. Alternatively, you could submit a Headstart application with IP Australia. This application is a ‘pre-assessment’ of the eligibility of your mark: it will determine whether your mark is likely to be registered and calculate your projected fees.

In order to be accepted for registration, your mark must essentially distinguish your goods and services from your competitors’. For this reason, it is hard to register any marks that fall into the categories below:

  1. Describe the type, quality, intended purpose, or value or the goods and services
  2. Are common or geographical names
  3. Conflict with other registered marks
  4. Are misleading in terms of the nature of the goods and services

Other words are protected by law and cannot be registered as trademarks. Some words are protected by additional legislation, such as ‘champagne’, which cannot be used to Australian Intellectual Property Law 4th Edition wine of any other origin than that from Champagne, France. A trademark professional can advise you on prohibited words or trademarks that are unlikely to be registered, such as generic terms.

Choosing a Unique Mark

You cannot register a trademark in Australia if your mark is confusingly similar with another registered trademark that covers goods or services similar to your own. Your mark must be truly unique to be registered.

Bear in mind that the above points are the most common reasons for application rejections. There are other more complex reasons: you should contact a trademark attorney for further details. Similarly, IP Australia staff can inform you of whether these reasons apply to your trademark.

Common Trademarks

There are a number of common trademarks that you should take care to avoid:

  1. Descriptive marks: these that describe the goods or services, such as HOT for heating products, or INTERNATIONAL for overseas shipping services.
  2. Common words of the English language such as ULTRA SOFT for tissue paper, or ENVIRONMENT FRIENDLY for green services
  3. Common surnames: a surname is regarded as common if it appears more than 750 times in current Australian records)
  4. Common geographical names, such as the name of your town, suburb, or state
  5. Abbreviations, acronyms, numerals, or letters commonly associated with goods
  6. Stereotypical pictures or drawings of the goods, such as a picture of a dog for pet food, or a horse shoe for farrier services

None of these names or pictures are prohibited, and can be effective when used in an unlikely way, or in combination with words that others are unlikely to use. A trademark attorney can determine whether your trademark is likely to have been used before.

Registration Process: A Brief Overview

To register a trademark in Australia, you must undergo the following process:

  1. Examination: an examiner from IP Australia will scour your application to ensure that you have filled out your application correctly, that your trademark complies with law, and that it is suitable for registration. If your examiner finds an issue with your application, you will receive an adverse report. You must respond to this report within 15 months.
  2. Opposition: If you examiner finds no issue, you will proceed to a period of opposition. During this period, your trademark is added to a national register, and other parties are provided with the opportunity to oppose your mark if it infringes on their own. Very few marks meet any opposition.
  3. Registration: Once your mark has passed through the opposition period, it can be formally registered. You must pay the registration fee within six months of the date of acceptance or your application is void.

Trademark registration is the only sure way to protect your trademark. Consult a trademark professional to discover whether your intellectual property is eligible for registration, or for more information on the registration process.

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