One Federal Court decision clarifies what is considered as “authorised use” of a trade mark wherein the trade mark user is not the trade mark owner but a subsidiary of the owner’s company.
Apply for a trade mark in Australia
What is a trade mark?
In commerce, a trade mark is the identity of a business, product or service. Colloquially, the name or logo of a business are often referred to as trade marks. The legislative definition of trade mark is broader than what it is commonly known. The Australian Trade Marks Act 1995 (Cth) defines trade marks as signs which distinguish products or services of a trader from those of other traders. Other than words and logos, trade marks can also be letters, numbers, shapes, sounds and scents.
Benefits of registering trade marks
As valuable company assets and important goodwill & margin protecting tools, trade marks are vital company assets. Trade mark registration provides the trade mark owner not only legal protection but also commercial benefits.
- The owner is given monopoly rights in using the trade mark in respect of the goods and services for which the registration is achieved.
- The owner can preclude others from using his or her registered trade mark. When it is necessary, the owner can initiate legal proceedings against acts of infringement and collect monetary compensation for damages.
- The owner is the only person who can rightfully authorise or assign the trade mark rights.
- A trade mark is an asset of a business which can appreciate over time as goodwill in the product or service grows.
- It dissuades brand copycats and so helps avoid the associated losses.
- It provides confidence to consumers and can help attract sales.
- Products and services bearing registered trade marks have greater presence which can lead to better product or service pricing.
- Trade mark registrations can be licensed or assigned, thereby allowing for other business models such as franchising.
The role of trade mark attorneys in applying for a trade mark in Australia
We, at Baxter IP, are always on standby to help with your trade mark applications. With our experienced trade mark attorneys, we can:
- Advise you on selecting and deciding your trade marks
- Help you identify all the relevant classes of goods and services and define appropriate scope of protection for your trade mark application
- Investigating potential obstacles of the application by performing effective trade mark searches for your proposed trade marks and provide you with advice on addressing the identified issues.
- If objections are raised by the examiner, we analyse the objections and assist you in addressing the them.
- If your application is opposed by a third party, our attorneys are able to assist you in opposition proceedings.
- In the event you have an application filed by yourself, or any person without a professional training, and mistakes occur as a result, our attorneys can review your application and correct errors to the extent which is allowable under the Trade Mark Regulations 1995 or refile the application.
How to apply for a trade mark with your Baxter IP trade mark attorney
Baxter IP offers a simple and cost-effective procedure for obtaining trade mark protection – here’s what’s involved:
- An initial consultation with an Australian trade mark attorney who will explain to you the trade marks process in Australia and Internationally whilst gaining an understanding of your commercial objectives
- Pre-filing preparation and strategy, such as:
- A trade mark attorney evaluating your goods and services selection and ensuring that it is comprehensive and not set out in a limiting manner;
- Trade mark database searching, distinctiveness consideration and trade mark representation evaluation for Australia;
- Trade mark database searching, distinctiveness consideration and trade mark representation evaluation for an international trade mark application
- Brief unregistered (common law) trade mark searching in Australia.
- Consideration of filing options, such as:
- Proceed with a standard Australian trade mark application based;
- Using a two-step TM Headstart with restricted goods or services;
- Using two-step TM Headstart with expanded goods or services; or
- Filing a standard Australian trade mark application after consideration of TM Headstart results.
- Filing of an trade mark application in Australia
- Preparing and filing a response to any trade mark examination report that arises
- Renewals management
- Filing overseas trade mark applications within six months of the Australian trade mark application through:
- Direct country filing
- Community Trade mark (CTM) or OAPI, ARIPO, or
- Madrid Protocol (or agreement) international system.
Bound by the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018, your trade mark attorney keeps information obtained from you confidential. When an application is filed, filing particulars, including the subject trade mark and the applicant’s information, will be made available to the public.