|Australian Trade Marks|
Applying for Trade Mark Registration
A trade mark capable of registration must distinguish the goods and services of the owner from goods and services of other traders. Therefore a registrable trade mark should not be able to prevent another trader from using words, logos and the like, which are in general use in the relevant trade. As a general rule, a trade mark that comprises; a common surname, a geographic name, a descriptive term relevant to the goods and/or services, or a complimentary term will be difficult to protect as a registered trade mark. However, if there has been extensive use of a trade mark which falls within the scope of the above categories, such use can be used to support a submission that the trade mark is registrable.
The Trade Marks Office will examine the application, usually within 12 to 15 months after lodgement (see The Process). The Examiner will conduct a search for any prior registrations, consider whether the trade mark is sufficiently distinctive and the application complies with the other rules regarding commercial or legal registrability.
If there are no objections, your application will then be accepted by the Trade Marks Office. If there are objections, these can be of a formal nature or may relate to the registrability of the trade mark and/or conflict with an earlier trade mark registration or application. It may be possible to overcome the objections by an amendment to the application, argument and/or the filing of evidence of use of the trade mark.
Once accepted, your application will be advertised by the Trade Marks Office as having been accepted in the Trades Marks Journal and the application will be open to opposition for a period of three months by anyone who believes that they would be adversely affected by registration of the trade mark. If no opposition is lodged, or the opposition is unsuccessful, the trade mark will be registered, subject to the payment of a registration fee.
Life of a Trade Mark Registration?
Once registered, a trade mark will be in force for ten (10) years from the date of application and can be renewed for further periods of ten years each thereafter. A trade mark registration can be kept in force for as long as the owner wishes.
A trade mark registration is infringed by the use of another trade mark which is confusingly or deceptively similar and is used in respect to similar goods and services. It's important to monitor the use of your trade mark, or those of other traders that are deceptively similar as these activities may impact on your business and reputation.
Cancellation of a Trade Mark Registration
A trade mark registration can be cancelled if it has not been in use for a continuous period of three years within the first five years after registration. In addition, if an application for cancellation is made on the basis of non-use, it is up to the registered owner to prove that the trade mark has been in use in Australia.
In addition a registration may be liable to cancellation if the trade mark has become a generic name for goods or services to which it is applied (eg. the terms escalator, linoleum, gramophone were once trade marks). Vigilance by the owners of trade marks such as ESKY, BANDAID, THERMOS and WINDCHEATER has enabled these trade marks to remain the valuable property of their owners.