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guide to australian trademark registration postal address po box 1140 upwey vic 3158 phone 03 8288 1432 web www.mmwtrademarks.com.au e info@mmwtrademarks.com.au © 2011 all rights reserved

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contents what is a trademark things to consider before applying step 1 ­ trademark search step 2 ­ filing the application classes step 3 ­ government examination ­ report or approval step 4 ­ registration rights fees flow chart international protection important notes more information page 3 page 4 page 6 page 7 page 9 page 11 page 12 page 13 page 14 page 15 page 17 2

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what is a trademark the trademark laws operating in australia define a trademark as a sign used or intended to be used to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person a sign for the purposes of trademark registration can be pretty much anything ­ a word or words a logo comprising words and imagery or style an image on its own a colour a shape an aspect of packaging and even smells and sounds can be registered as trademarks the key is to ensure that your `sign is capable of distinguishing your goods/services this means it needs to act as a `badge of origin for those goods or services something that lets consumers and others know that the product/service belongs to you it is therefore more difficult to register a trademark if it is or has as its main element/s something that other traders would honestly need to use to describe their goods/services of the same or similar nature to yours examples of difficult to register trademarks those that are questioned on their capability to distinguish the goods/services would be the best computer shop for retail services ­ other computer shop operators are likely to need to use this phrase for their own shop honestly melbourne chinese restaurant for restaurant services ­ other chinese restaurant operators are likely to need to inform people they are in melbourne and use this similar phrase snugfit for clothing goods ­ other clothing producers are likely to need to describe their clothes as snug fitting and use this similar phrase trademarks may also be questioned on their capabilities when they are for common surnames or simply the names of places ­ this is because other people with that surname have a right to use it as do people from a certain place in a lot of cases combining a `commonly used word or phrase with a not-socommonly used word or phrase or an image/logo will avoid this issue because on the whole it s not likely other traders would need to use that trademark 3

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things to consider before applying is your trademark registrable most importantly your trademark needs to meet the actual definition seen on the previous page to be registrable if it doesn t it could prove difficult to secure rights it s also important to ensure your chosen trademark does not conflict with one that holds earlier rights if someone else has registered the same or deceptively similar trademark already for similar goods/services or has an application pending before you it could be difficult for you to secure registration due to that conflict and the likelihood of confusion occurring between your `brand and the one with earlier rights for this reason we strongly encourage a trademark search to be conducted as soon as you select a name and before you officially commence using it the search is discussed further in this guide there are also certain words and symbols that are prohibited by trademark law in australia or are covered by other legislation for example you could not register a trademark that incorporates the olympic rings you cannot register trademarks that are scandalous contrary to law or likely to mislead and deceive scandalous trademarks are generally speaking ones that are offensive to other people not necessarily simply in poor taste or rude but truly offensive such as trademarks that include offensive and/or abusive elements that are personal religious or racial in nature for a trademark to be considered `misleading and deceptive there must be an element that automatically does this ­ up front for example if you were to attempt registering a trademark that included a domain name that you didn t own this would be deceptive or if you tried using a celebrity s name in your trademark but didn t have permission to do so this would also be deceptive as you would be suggesting an affiliation or endorsement that doesn t exist who can own a trademark the making of an application in itself is confirmation to the trademark office that you use or intend to use the trademark for the goods/services that are relevant the `rightful owner is usually the one that adopted the trademark or has permission to file on behalf of another person a trademark can be challenged by other parties if they believe that you are not the `rightful owner of the trademark or that the application has been made in bad faith the owner must be someone with a legal status ­ such as an individual or group of individuals or an incorporated body such as a pty ltd or limited company a 4

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business name cannot own a trademark generally the right to own property including trademarks falls to whoever is the business registrant is it possible for someone else to use or register the same `trademark in short yes by registering your trademark you are granted the right to use that trademark for the goods/services nominated it may be possible for someone else to register the same trademark quite easily for goods/services that are not deemed related ­ where it s unlikely consumers would be confused between them it is also possible for someone else to register the same or similar trademark for the same goods/services after you do this can be done if they show that they used and promoted that trademark since earlier than you sought trademark registration and that use has been continuous if they can do this the examiner must remove your trademark as a problem it may also be done if they show their use to be honest and continuous with your trademark registration this later option can be more difficult as the evidence generally needs to be substantial it s also important to note that if someone has used the same or very similar trademark since before you first used or registered whichever is the earlier date but not sought registration as a trademark they may have rights under common law that would allow them a defence against trademark infringement which in turn could see them allowed to continue use even if you have registered the trademark business names company names domain names etc having registered any of these names does not provide you with ownership and rights in the name ­ only trademark registration will do this a business name is also known as a trading name it allows the registrant of that name to trade by the name ­ in the state they have registered it s essentially an `alias for whoever is carrying on the business however when registering a business you will see there is a disclaimer to ensure that your chosen business name does not infringe a trademark a company name is a legal entity where as a business name is not if a company intends to trade by a name other than the company name registered it must also register a business name this is a federal registration rather than state based however still does not provide ownership or higher protection than a trademark a domain name is essentially your website address the name that others will type into their internet browser in order to find your website domain names are basically provided to you under license for a certain period of time to use as the identifier for your website and must be renewed or you will risk loss of website and email accounts again it does not provide ownership to the key name you have chosen 5

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step 1 ­ trademark search we consider that a trademark search should head your `to do list when considering a new name for a business company product or service if your preferred name is too similar to an existing trademark you could not only have difficulties in securing rights but you may be infringing another person s rights and face action because of it ensuring your chosen trademark is available and is not infringing anyone else s rights provides you with peace of mind to know that your `brand won t be stepping on any toes and that it can become your property and business asset even if you have been using your `brand and promoting it for some time difficulties can arise so a trademark search should always be considered the official examination with the government office once you file an application can take a long time usually around 4 months so you may wish to know where you stand sooner and our various searches can provide you with this information we offer different types of searches to suit different budgets identical search ­ considers whether there is any absolutely identical trademark already registered in australia to your chosen name for the same/closely related goods or services register search ­ considers the australian trademark database for any absolutely identical trademarks or deceptively similar trademarks already pending or registered in australia that may be raised as `too similar to yours full availability infringement search ­ considers whether there are likely to be trademarks consider to conflict with yours whether there are any other areas of the trademarks act that may see your trademark as not registrable whether there are existing businesses and companies in australia who have used the same name for a while and have `prior rights and general internet searches 6

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step 2 ­ filing the application classes as trademarks are `signs used to distinguish the goods/services of different traders it follows that when you file an application you must advise what those goods/services are all goods and services fall into `classes that have been listed and put in place under an international agreement the list of classes and the goods/services that fall into them have been adopted by a majority of countries around the world there are 45 of these `classes to select from numbers 1-34 cover goods and numbers 35-45 cover services a part of our search process regardless of the type of search you select is to provide recommendation on which classes you require when we prepare and file your application in order to meet the basic filing requirements we must advise the trademark office of the class number and provide a specification of the goods/services being claimed with the class/es by employing our office to file the application on your behalf we will attend to this for you further by employing our office to file the application we will be listed as your agent on the official record as the address for service this means all government correspondence will come to our office for attention ­ it also means that in the event another party wishes to query contact or challenge your trademark they should contact us rather than you directly by receiving all communication for you we can review report and advise accordingly series trademarks it is possible to request registration of a series of trademarks this is allowed when you have two or more trademarks that closely resemble each other and differ only in respect of one or more of the following ways a statements or representations as to the goods or services in relation to which the trademarks are to be used for example ­ in relation to `clothing headgear and footwear name clothing name headgear name footwear 7

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b statements or representations as to number price quality or names of places examples number mmw 1 mmw 2 mmw mmw 2nd mmw 3rd price mmw $1.00 mmw $20.00 1st mmw $5.00 mmw £5.00 mmw ¥5.00 quality mmw premier mmw superior mmw gold mmw silver mmw bronze names of places sydney mmw melbourne mmw mmw mmw perth mmw w.a c the colour of any part of the trade mark examples mmw mmw mmw these differ only in colour in part of the mark so would be acceptable types of applications there are several ways to file an application in australia suited to different purposes and budgets 1 paper filing most expensive and not used by our office ­ this involves completing and posting/faxing a `paper application ­ this incurs the highest government fee for a standard trademark 2 pick list filing ­ least expensive government fee ­ usually appropriate this means we select goods/services from a government generated pick-list for each class of your trademark application ­ using their terms and definitions 3 own specification filing ­ in between government fee ­ this allows us to draft the goods/services in our own words rather than use the pick list ­ this can be good when you have an unusual product/service that does not meet common definitions or if we need to draft your specification in a way that avoids conflict with another trademark 8

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step 3 ­ government examination report or approval after your application is filed the government office must examine all of the details to ensure that a the basic filing requirements are met and b to ensure that your trademark is registrable this process currently takes around 4 months ­ a time frame that does fluctuate once examination is complete we will receive an `adverse report if there are any problems found or a `notice of acceptance if no problems are found adverse reports if an adverse report is issued and you have had a full search conducted before filing the issues raised will not come as a surprise the most common reasons for the trademark office to object to your trademark being approved are as explained in further detail earlier in this guide a your trademark conflicts with a trademark that has an earlier date than your own and b your trademark is not automatically seen as capable of distinguishing your goods/services from those of other traders if an adverse report is issued you will be given 15 months to respond and address the issues so that your trademark is in order to be approved we encourage any applicant that receives a report to respond to it as soon as possible if left too late in the time frame you may need to request and pay for an extension of time past the 15 months allowed the usual way to address these types of issues is providing evidence of use or in some cases intent to use your trademark refining your goods/services to remove the issue and in some cases negotiating with owners of earlier trademarks our office will advise based on your situation the best and most likely to succeed option this advice is provided at no additional charges as it is included in your application fee detailed on the previous page we will seek your instruction and if and only if you provide it will be take further billable action on your behalf notice of acceptance approval if no issues are found during the government examination of your application ­ or if you successfully address any issues that are raised ­ a notice of acceptance will be issued this will advise of the date on which the acceptance of your trademark will be advertised in the official journal of trademarks the advertisement of 9

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acceptance commences a 3-month period during which other people may lodge formal objections to your trademark becoming registered if they believe they have grounds to do so if nobody opposes your trademark during those 3 months or do not request an extension of time in which to lodge their objection your trademark can then progress to full registration what if someone opposes if someone files a notice of opposition against your trademark becoming registered during the 3 month period or within an extended period if they request such an extension they must notify us if we are acting as your agents further their notice must advise on what grounds they are opposing your trademark there are a number of grounds an opponent may select ­ including the same ones that the examiner may rely on to issue an adverse report additionally an opponent may claim that you are not the owner of your trademark that it is too similar to one that has acquired a reputation in australia that it includes false geographical indications amongst others after filing a notice of opposition they will then have three months to file and provide us with a copy evidence in support of that opposition in an attempt to prove that the grounds they have selected are true you will then have the opportunity to provide evidence in answer to the evidence they have supplied you will also have three months the opponent will then have a final chance to supply further evidence before the matter is decided a decision may happen simply by a government officer considering both parties evidence or either of the parties can request to be heard in the matter the successful party in opposition proceed is able to request an `award of costs in their favour this means the unsuccessful party may be ordered to pay a certain amount of the `winning side s costs all costs are determined by a set schedule of course if your application is opposed we will notify you immediately upon our office being informed and provide advice recommendations and fee estimates based on your particular case 10

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step 4 ­ registration rights if your trademark is accepted for registration and is not opposed by a third party or if you are opposed but come out as the successful party the trademark can then proceed to registration upon receipt of final fees this will not occur for a minimum of 7.5 months how long does registration last the initial period of protection is for 10 years from the date the application was first filed you can renew this each 10 years if you desire and are still using your trademark it s important to note that trademarks can be vulnerable to removal if they remain unused for a certain period of time where will i be registered your trademark will be registered australia-wide your rights therefore also apply australia-wide unless particular limitations are placed on your trademark which usually would occur to resolve opposition matters and similar what rights do i have as a trademark owner there are several main rights that come with a registered trademark the right to use your trademark in australia in connection with the goods/services it is registered in respect of the right to authorise the use of your trademark in australia in connection with the goods/services it is registered in respect of e.g in a licensing situation or franchise situation etc the right to take infringement action against other persons that use your trademark or a deceptively similar trademark in australia in connection with the same or related goods/services without your permission and are found to be infringing upon your rights the right to claim your trademark is `registered and use the trademark with the ® symbol a person cannot claim or represent a trademark as registered or use this symbol if it s not registered in fact it s an offence to do so 11

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fees the following fees apply during the course of a standard australian trademark application all fees are inclusive of government fees professional fees and gst and are current at the time of publication searches see page 7 identical search register search full availability infringement search full availability infringement search $0.00 $88.00 $330.00 word marks $550.00 word image marks standard applications see page 9 first class using the `pick list each additional class using the `pick list first class own specification rather than pick list each additional class own specification rather than pick list $495.00 $385.00 $535.00 $425.00 series applications see page 8 first class using the `pick list each additional class using the `pick list first class own specification rather than pick list each additional class own specification rather than pick list $645.00 $535.00 $685.00 $575.00 registration renewal see page 12 registration per class renewal ­ first class renewal ­ per additional class $360.00 $410.00 $375.00 other common fees ­ your instruction will always be sought if not listed please request a quote hourly fee when applicable $220.00 filing of a notice of opposition $580.00 filing request to remove due to non-use $580.00 extension of time per month or part therefore ­ $155.00 application matters extension of time per month or part thereof ­ $205.00 opposition matters extension of time per month or part thereof and $155.00 per class ­ renewal of trademark request assignment of ownership transfer $155.00 ownership 12

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flow chart following indicates a typical application to registration process search before filing if requested ­ not compulsory note represents possible activity application filed represents typical activity government examination allow 4 months adverse report issued accepted for registration file acceptable response to report ­ 15 months to do so acceptance advertised opposition filed trademark registered certificate issued opposition decided trademark registration refused 13

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international protection there are essentially two ways you can seek to register a trademark outside of australia 1 filing of national applications directly to each country of interest in some cases this will be the only option or 2 through the madrid protocol ­ a protocol to which australia is a member this allows you to file a single application and choose which of the other member countries you wish to apply in there are currently around 80 countries available through this system for more information on the madrid protocol please see our international trademarks guide priority period available for australian applicants the date of your earliest application for example your australian application for a particular trademark is known as your `priority date if you file overseas within 6 months of this date you are entitled to claim in most countries priority so that each international application will be treated as though filed at the same time as your australian application this will provide you with preference over any application filed during that time with a later priority date this provides a good window of time to plan and budget for any overseas trademark requirements this is a strict six month period and cannot be extended if you file later than 6-months you will lose the right to claim priority based on your earlier australian application and each foreign application would then be treated as filed on the precise physical filing date european community trademark a community trademark ctm extends to all member countries of the european union and can be achieved by filing a single application or selecting it as a single designation under the madrid protocol if approved you will gain the same level of protection and right as you would by filing into each european union member separately however it s important to note that because it is a single application a rejection due to a problem in one-member country will affect the entire ctm application 14

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important notes infringement it is the trademark owner s responsibility to monitor for infringement and determine if action is required contact our office if you would like information about our monitoring service help identify infringing activity or conflicting applications filed after your own if you suspect your trademark rights are being infringed please contact us there are circumstances that allow people to have defence to any allegation of infringement so always seek professional advice before making any threat of infringement action if you have received communication from another party stating that you are infringing their rights please contact us for advice use it or lose it remember ­ trademarks can become vulnerable to removal if they remain unused for a period of time use it correctly use your trademark the way it has been registered it is a punishable offense to display a trademark as registered including by using the ® symbol if it is not subject of a trademark registration use your trademark as an adjective ­ it is not a noun ­ for example xyz® lawnmowers xyz® we import and distribute xyz® lawnmowers we import and distribute xyzs® don t allow your trademark to become generic as a trademark is a `sign used to distinguish the goods/services don t let your trademark become the common name for the type of goods/services as it could then cease to be considered a `trademark in such cases it may be possible for the registration to be cancelled following an application the the courts a good example of a trademark owner ensuring their trademark does not become generic is sealed air corporation from usa this company owns the rights in a number of countries to the trademark bubble wrap and variations a term a lot of us are familiar with and use in daily life ­ however this company is very good at contacting others that try and use this term as a description of goods in trademark applications and advising that it the term is 15

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