A Trademark protects a brand, logo, slogan or name, so you can distinguish your business brands from your competitors. You can also trademark a company name and trademark a business name.
What isn’t well known is that a Trademark is only as good as the details that are lodged which are not assessed by the Government.
Understanding the trademark laws and your business to ensure that the correct legal details are lodged is essential, otherwise your trademark rights can be removed (or cancelled).
A Registered Trademark provides Australia-wide exclusive rights to commercially use your Trademark for the goods or services that it is registered. A Trademark also supports your entitlement to an A.S.I.C. Registration featuring the trademark such as a company name, or business name.
Likewise domain names can be protected and controlled if you have registered the domain name (website) as a Trademark. Importantly you should never purchase a domain name without checking who owns the Trademark.
A Trademark Registration allows you to enforce your Trademark rights to claim through Federal Court, compensation (damages) or lost profit when a rival has used your Trademark.
Contrary to belief, an A.S.I.C. Registration for a business name, company name or domain name DOES NOT provide any legal rights or ownership of a brand or logo. Only the Trademark Registration does, and only if you comply and meet the requirements of Trademark law.
Trademark requirements are not part of the Trademark Application process, but are ongoing compliance and obligations as you trade with the Trademark. Only a legal practitioner can guide you through this as your business trades.
Owning a name, brand, logo or slogan is solely governed by owning the Trademark rights and using them in the correct way as required by Trademark legislation.
Businesses often also refer to Trademark Attorneys as Trademark Lawyers.
The Trademark Application process takes a minimum of 8 months, and if registered you are protected for 10 years provided you comply with the rules and regulations as provided for in the Trademarks Act 1995 (Cth).
The Trademark Registration can be terminated unless you continuously comply with Trademark rules for trading.
Only a Trademark Attorney can watch these rules and ensure you are meeting your obligations.
We conduct regular Trademark Audits to check you do comply with trading Trademark rules and laws, and that there are no gaps in Trademark coverage.
This is important for all businesses because they usually diverge from their original brand position in new directions that could possibly void the original Trademark rights.
Many businesses fail to get their Trademark Application content legally correct, and this is not checked by IP Australia, who will approve incorrect legal details.
This leaves you exposed to gaps and legal issues which will only be identified by a Trademark Attorney when you engage one to represent you when a copycat trades with the Trademark (or similar), or a Third Party opposes your Trademark.
It is not your necessarily your “trademark right”, even if you submit a trademark application first, or even if you have a Registered Trademark.
The Trademark Act 1995 (Cth) does provide for many other requirements outside of the application process which deem you (or someone else) to hold and own “true” ownership to the Trademark.
Read where business actually can end up after they lose their Trademark Registrations in the Federal Court and up for Damages.
We have reported just some of the Court cases in our blogs where D.I.Y. Trademark applications were cancelled and failed to be enforced.
This is usually the outcome for D.I.Y. because the Trademark Applications lacked the right legal detail, or the business wasn’t the “true” owner with the right legal basis, even though they applied “first”.
For 15 years, our firm has proudly serviced the intellectual property needs of Sydney, Melbourne, Brisbane, Perth and Adelaide businesses.
It’s our industry Institute of Australian and New Zealand Patent and Trademark Attorneys.
A Trademark Attorney has to have exceptional experience and be recommended by other Patent Attorneys as providing good quality services in order to gain membership of I.P.T.A.. We have been elevated from membership status to being a Fellow.
Trademarks protect logos, brands, slogans, a business or company name, a person’s name (first name, surname or both), website name, letter, number, word(s), sound, smell, shape, logo, picture, moving image, aspect of packaging, or combination of these.
Successful trademarks can be sold or even licensed, earning you income.
Many wrongly think an ASIC registered business or company name provides rights to a brand! It doesn’t.
See ASIC’s website where they discuss conflicts (disputes) between names. Their advice is to seek legal advice. Our firm conducts infringement research.
If you are concerned with your business, brand or are about to start a business, please fill out our trademark form.
Our research goes beyond any clients, for example, these two are in conflict:
Why wait for registration in 8 month?
Why stress over the fact that your Registration could be removed by the Courts because you didn’t know Trademark laws like we do?
If a Court holds that you were not entitled, then they will order IP Australia to remove your Registration, leaving you to pay for compensation claims.
A Registered Trademark can be enforced against any other business that name, or similar for in the same or closely related fields.
The Registered Trademark Owner can sue to claim damages or profit, so it’s wise to check for infringements and rule them out before the commencement of trading.
Be sceptic of what advice you find online or through unqualified people.
It usually is incorrect or misrepresents legislative requirements.
In Intellectual Property, what is visible above-ground is nothing compared to what lurks in the actual laws beneath
The Trademark Office assist by searching & assessing Trademark Applications.
Our Trademark Attorney research covers a great deal more in identifying conflicts, and our searches are insured risk.
The Trademark Office process whilst good, has many limitations, including:
– No warranty or insurance provided on their assessment.
– They don’t carry liability for approving rights in error.
– Endorses using Trademark Attorneys.
– Publish applications which may raise issues with the owner of a similar trademark.
– Takes 8 months (minimum).
Your name and address are published online by the Trademarks Office.
When you are represented by our trademark attorney firm you can safely ignore scams and know you haven’t missed authentic correspondence.
You won’t find out the gaps in your understanding until it’s too late and you possibly find you don’t have the protection you thought you had.
One day you may be approached for purchase of your trademark rights.
Before the deal is finished, the quality of the rights should be checked by a Trademark Attorney.
Poor quality trademark rights will cause a buyer to walk away.
One example we have seen happen so often is discussed below.
Company A (D.I.Y.) and Company B (represented) are rivals applying for the same or similar Trademarks to protect their business name.
Scenario 1
Company A’s Application is rejected because it is incorrect and a new application cannot be lodged because Company B now has secured the Trademark rights.
Company A is forced to come up with a new business name. In some cases businesses find this out many years after having run a business which is a real brand concern.
Scenario 2
Company A’s application content had some real gaps in ownership, coverage and therefore will fail to protect them when they need to use it. They are not told this during the Application process because the Government doesn’t review their business plan or website. Company A has little or no rights but think they do.
Company C copies Company A’s Trademark and gets away with it because the Company A’s Trademark has failures in cover and/or ownership.
Professional help is a must.
We see many Trademark Registration which carry little or no enforcement possibility, or worse, present legal conflicts which lead to Court Action.
Represented businesses have fewer legal errors which can render a trademark invalid.
Many are unaware that a trademark can have different protective values, based on experience (0%, 5%, 80%, etc).
Protective value is the ability to stop a competitor.
It depends on the quality of the trademark’s legal content and whether it could be contested by rivals who have a better case to argue for ownership.
This value is NOT assessed by the Trademarks Office, and is a hidden disadvantage for the unrepresented.
Also, many legal errors cannot be “fixed” later, and are found when it is all too late.
How to go about this can be quite confusing and is often done incorrectly.
Here’s a step by step trademark logo guide:
1. Don’t design graphics until you are confident the words featured in your logo don’t infringe: Otherwise you may waste your funds developing a logo if the words infringe. A Trademark Attorney can conduct trademark searches and assess your proposal. D.I.Y. searches or quick searches by professionals often lead to issues that are only brought out when Court action is commenced. See our Court case reports.
2. Make certain the graphics do not infringe either: If you design a boomerang for your clothing do you infringe Nike’s “Tick symbol” even though they are different items? For legal confidence, a Trademark Attorney should evaluate your image and ensure your logo does not infringe.
3. Trademark your logo: You need the legally correct format, class(es), wording and ownership to enable your Barrister to stop copycats, otherwise your trademark will certainly almost not work. The Trademark Office does not assess these filed components and presumes they are all right. See this Court case where a D.I.Y. Trademark owner engaged a Trademark Attorney when his trademark was infringed to stop a copycat. His Trademark Attorney spotted an issue with the D.I.Y. trademark and amended the Trademark details to fix it, then took Court action. However the judge dismissed the case and ordered Cancellation of the “amended” Trademark Registration on the basis that it was invalid when lodged. The D.I.Y. Trademark owner could not stop the copycat!
4. Wait 8 months for your Trademark to be Registered before use: The Trademark Office does not warranty rights, and the Registration can be Revoked if it were not legally right for you to own them. For clarity, an attorney can lessen your risk in just 2 weeks (or less) with comprehensive infringement research. Beware of quick easy looking searches or offers, they often are not comprehensive and are not worth it!
5. Once Registered, find infringements each month: Monitoring for infringements is not a role of The Trademark Office. An attorney can assist you assess whether a rival’s use of your name infringes and seek compensation for you.
“As a startup organisation seeking help with trademarking our company’s name and logo we had been directed to Alex Ferrante for some free advice. Alex went above and beyond the call of duty by giving us over an hour of his time when only 30 minutes had been booked. He was very informative, helpful and clear about the process of obtaining a trademark. And he followed up soon after the meeting with the promised summary of our situation and suggested way forward.” –
ANDY CAMPBELL
“Alex was incredibly helpful, he was clear, concise and comprehensive. I would recommend him to anybody with
any doubts about the processes involved.”
IAN SHARAM
“A big thank you to Australian Patent and Trademark Services. Alex has given me a precise strategic pathway to follow backed up by his professional advice and knowledge. I highly recommend Alex and his team to guide you in the right direction. Thanks again.”
GREGG COLBERT
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