A registered trade mark is used to distinguish the goods or services of one trader from the goods or services of another trader.
A registered trade mark can be word, logo, shape, colour, sound or scent.
A registered trade mark provides you withexclusive rights to use, license and sell the mark. This means that no one else in Australia can use your trade mark in relation to the goods and services for which it is registered without your permission.
The exclusive rights provided by trade mark registration subsist so long as the trade mark remains registered. There is no set limit on how long a trade mark may remain registered. Thus, so long as the registration is not lost, a trade mark may be protected in perpetuity.
A registered trade mark is a cost-effective way to ensure exclusive ownership of your brand and to protect the reputation of your brand.
The registration of a business name, company name or domain name does not in itself give you any exclusive ownership or proprietary rights — only a registered trade mark provides that kind of protection. A registered trade mark has several advantages over the use of an unregistered trade mark, such as:
- a registered trade mark is an asset which can be valued on your businesses’ balance sheet. It is more difficult to quantify the value of an unregistered trade mark;
- a registered trade mark is more valuable to a potential investor or purchaser of your business than an unregistered trade mark;
- trade mark registration operates Australia wide and therefore a registered trade mark owner is not required to establish a business reputation throughout Australia when it pursues an infringer for trade mark infringement. Whereas unregistered trade mark owners will need prove business reputation in those parts of Australia where the infringing conduct had occurred;
- generally speaking, unregistered trade mark infringement claims are more risky, complex and costly than registered trade mark infringement claims; and
- a registered trade mark owner is protected from claims that their registered trade mark infringes the trade mark of others, provided the registered owner is using their registered trade mark in Australia.
A trade mark registered in Australia only provides you with protection in Australia – it may not stop another person from using the same or a similar trade mark outside of Australia and does not provide you with trade mark rights in an overseas jurisdiction. For example, a registered Australian trade mark does not prevent someone else from registering or using the same trade mark in France, Spain or China.
To obtain international trade mark protection, an Australian trade mark owner must either lodge:
- a separate trade mark application directly in each country or region via that country or region’s Trade Mark Office; or
- a single international trade mark application with the World Intellectual Property Organisation, based on the Australian trade mark application or registration, by designating any number of the 95 countries currently party to the Madrid Protocol (“a Madrid Protocol application”).
If you lodge a Madrid Protocol application, you only need to:
- lodge a single trade mark application in Australia (based on your existing Australian trade mark application or registration); and
- nominate which of the other Madrid Protocol members you require trade mark protection under.
a. What are the benefits of a Madrid Protocol application?
The main benefits of an international application under the Madrid Protocol are that you:
- only have to file one trade mark application via a single filing system, which can be simpler and cheaper than directly applying to each country, depending on how widely you want to trade;
- not need have an address for service within the Madrid member countries at time of filing; and
- can subsequently designate other Madrid member countries at a later date (additional government charges will apply).
b. What are the main requirements for a Madrid Protocol application?
The main prerequisite for an international application is that the trade mark concerned be the subject of an existing Australian trade mark registration or pending application. However, should your Australian trade mark be rejected or cancelled, your international application will also fall away.
You must also satisfy the ‘entitlement requirement’ in Australia and ensure that the existing Australian trade mark registration or pending application is the same as the international application.
c. What is the process for a Madrid Protocol application?
The Madrid Protocol has a membership of around 95 countries. All requests for protection in Madrid member countries are examined by that country’s Trade Marks Office according to the trade mark laws existing in those countries. It can take up to 18 months for an international registration to be examined and accepted for registration.
d. How much does a Madrid Protocol application cost?
The cost of an international application will depend on:
- whether you apply via the Madrid Protocol or through each individual country’s Trade Marks Office;
- both the number and the particular countries designated and the number of classes of goods or services covered; and
- the professional fees associated with the trade mark attorneys we use in each particular country to assist us with the registration process.
To be cost effective, you should designate at least two countries. It would normally be less expensive to add a country to an existing international application than it would be to file a separate national application in that country.
e. How long does international trade mark protection last?
An international registration generally lasts for 10 years from the date of registration. It may be renewed for additional 10-year periods for a renewal fee.
Your trade mark application may be rejected if your proposed trade mark is already registered, is the subject of an existing trade mark application, or is ‘substantially identical with, or deceptively similar to’ an existing trade mark.
A trade mark clearance search enables you to:
- determine whether your proposed trade mark is available for registration;
- identify whether there are any obstacles to registration;
- minimise the risk of infringing a third party’s intellectual property rights; and
- minimise your business’ exposure when investing time and money in a trade mark or brand name which cannot be subsequently registered or must be changed as the result of a trade mark dispute.
We highly recommend conducting a trade mark clearance search before proceeding with a trade mark application. We have a range of different trade mark clearance search packages to suit your budget. Our trade mark clearance searches comprise a report which:
- identifies whether your trade mark is likely to be accepted or rejected by the Australian Trade Marks Office;
- sets out any obstacles to the use or registration of your proposed trade mark; and
- proposes strategies you can use for overcoming those obstacles.
Your trade mark will be registered from the date you originally filed your trade mark application. Once registered, your trade mark has legal protection and you can stop others using your registered trade mark without your permission.
The life of a registered trade mark can be indefinite provided you pay your renewal fees on time (every 10 years). A trade mark registration initially lasts 10 years from the date you filed the trade mark application.
Once your trade mark has been registered, the Australian Department of Immigration and Border Protection (“DIBP”) will allow you to file a ‘Notice of Objection’ to the importation of goods which may infringe your trade mark. DIBP will seize goods suspected of infringing your trade mark, such as counterfeit goods or goods branded with your trade mark that appear to be imported in Australia without your approval.
You will be notified of the seizure of the imported goods by DIBP and you will be given the opportunity to commence trade mark infringement proceedings against the importer of the infringing goods unless the importer has agreed to voluntary forfeit the imported goods. If you require more information about a ‘Notice of Objection’ and/or would like to file ‘Notice of Objection’, please contact us and we can provide you with a tailored quote.