Considering Applying for a Trademark For Your Australian Business? Here’s What You Should Know
Not every business name, product name or service name qualifies for a trademark. The truth is that your trademark name must set your goods and services apart from other like goods and services in the marketplace.
This explains why names common surnames, such as Smith, will be difficult to get a trademark on. Likewise, geographic names or any name that conflicts with an earlier trademark may disqualify you from receiving a trademark when you try to register. The exception here is for a name that has already been used for a long time, perhaps a family business that has run under the same surname for several generations.
Also, there are some words that are actually protected by law and cannot be registered as trademarks, and some are prohibited as trademarks under the Trade Marks Act 1995.
Other words are affected by other legislation, such as the use of the word “Champagne,” which is governed by provisions of the Australian Wine and Brandy Corporation Act 1980.
The application process
Before determining the trademark name you want to register, you may find it beneficial to sit down and make a list of possible names (or logos) that are appropriate to trademark for your business. This will allow you a few options, in the event one is not registerable for one reason or another.
This beginning process should followed by a thorough search of the trademarks database and other goods and services existing in the market place to ensure that you will not be infringing any existing trade marks.
You should know that there is more than one way to apply for a trademark and these include:
• Trademark Standard e-form (can be submitted online)
• Trademark application kit and form (downloadable form can be completed and mailed)
• Visit one an Intellectual Property (IP) Australia State Office location
What is IP Australia?
IP Australia is the Australian Government agency that oversees administration of patents, trademarks, designs and Plant Breeder’s Rights. It is a division of the Department of Industry, Tourism and Resources (ITR) but operates independently and reports directly to the Minister.
IP Australia focuses primarily on making sure that its system meets Australian business owner’s needs, that the international IP system meets the needs of Australian business owners, and that it provides business owners quality services in the most cost effective manor possible.
What to include in the application to submit to IP Australia
An application to IP Australia must include the following:
1) A representation of the trademark
2) Nomination of the relevant classes
3) Description of the goods and/or services to which it will apply; and
4) A translation of any part of your mark that is another language
Note: There is a Trade Marks Application Kit available to assist you in applying for a trademark. You can request a copy of the booklet from IP Australia, or alternatively you can download it here: http://www.ipaustralia.gov.au/trademarks/process_index.shtml
Assistance is available
The application process for a trademark is not difficult; however, keep in mind that there is assistance offered to Australian business owners who are looking to have a name trademarked and this is offered through the Australian Government’s Assisted Filing Services.
The Service provides an assessment, which can help you determine the suitability of your proposed trademark for registration. Additionally, as an added bonus, you will be able to speak directly to an IP Australia staff member about the registrability of your trademark with minimum delay, which may help expedite the process or, at the very least, help you to better understand the requirements.
Trademark fees
There are fees associated with the trademark application process. These will vary based on actions that may be required to process the application; however, there is a downloadable fee schedule that you can use to determine the fees for a typical, successful application.
Forms, publications and additional resources
Recognizing that the trademark process can be a daunting one, IP Australia has compiled a list of resources, including forms, publications, applications and helpful kits that you can use to simplify the process and make sure you do it right the first time.
These comprehensive resources are available to you free of charge and can be quickly and easily downloaded as PDF files or viewed as HTML files. There is also a helpful glossary on the IP Australia website, along with an area designated for official notices, IP legislation that dates back as far as 2002 and is kept up-to-date and more.
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