A trade mark distinguishes your brand and helps customers identify your products or services from competitors and is a valuable part of the intellectual property assets of your business. Trade marks in Australia can be either registered or unregistered, but registering your trade mark provides the best legal protection. This article explores various aspects of trade mark protection in Australia and internationally.

 

Why Register a Trade Mark?

Registered trade marks are essential for marketing and brand management strategies and can unlock powerful protection tools against others infringing your legal rights.
Registering your trade mark can also offer other benefits such as

• Exclusive Rights: You can use your trade mark for your goods and services exclusively in Australia.
• Business Asset: As your business grows, your trade mark becomes increasingly valuable.
• Legal Protection: You gain the right to use the ® symbol and prevent others from using your trade mark or anything deceptively similar.
• Flexibility: Trade marks can be sold or licensed, such as for a franchise business model.
• International: Australian registration is a starting point to obtain similar protection overseas.

 

What elements can be trade marked?

A common misconception is that trade marks are limited to logos and words. In reality, registered trade marks can protect a wide range of brand elements, including phrases, letters, sounds, smells, pictures, movements, colours, packaging, or even combinations of these.

 

Trade Mark Classes

When applying for a registered trade mark, it’s essential to provide detailed descriptions of the goods or services your trade mark will cover. This step involves selecting the appropriate classes that correspond to your business’s offerings. In Australia, there are 45 classes in total—classes 1 to 34 are for goods, and classes 35 to 45 are for services. Each class groups related goods or services, such as clothing, electronics, legal services, or marketing services.

Accurate selection of the relevant classes is crucial because it determines the scope of your trade mark’s protection. Therefore, taking the time to carefully consider and describe your goods and services in detail ensures that your trade mark is effectively protected across all the areas of your business.

 

Protection Period

Registered trade marks are initially protected for 10 years from the filing date, providing your brand with exclusive legal rights during this period. After the initial 10 years, the trade mark can be renewed indefinitely. This long-term protection allows businesses to maintain the distinctiveness of their brand and safeguard their reputation in the marketplace for as long as the trade mark remains active and relevant. Regular renewals ensure that your brand’s identity is legally protected and continue to offer the benefits of exclusive rights, reinforcing your market position.

 

International Protection

To extend your trade mark protection overseas, you can apply through individual country IP offices or regional IP offices, such as the European Union Intellectual Property Office or Benelux Office for Intellectual property. Alternatively, you can use the Madrid System, managed by World Intellectual Property Organisation, which allows for multi-country applications with a single submission.

Once you file in Australia, you have six months to apply internationally to obtain priority from your Australian filing date.

You will need to bear in mind that many countries’ IP law gives priority to the first person to file and register their trade mark, so advice on timing is essential.

 

Protect Your Brand Today

Investing in a registered trade mark ensures the long-term protection and growth of your brand’s identity. Bell Legal’s IP professionals offer comprehensive services, including legal and commercial advice on brand protection, registering your trade marks both locally and internationally, commercialising your intellectual property, and safeguarding your valuable business assets.

More particularly, our IP professionals can assist you with:

• Trade Marks and Marketing: Consulting on all legal and commercial aspects of brand protection.
• Check Existing Trade Marks: Helping you obtain an indication of other trade marks which may hinder your registration.
• Process & Fees: Detailed advice before applying about the process, suggested classes, class descriptions, time frames and fees payable.
• Pre-Application Service: Getting feedback from an examiner at the start of your application via a TM Headstart application.
• Standard Online Application: more complex applications where TM Headstart does not apply.
• International: Assist you with all aspects of registration in Australia and in other countries you wish to trade in.

Contact one of our IP professionals today to learn how we can help you protect your intellectual property assets.

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• Phone: (07) 5597 3366