In Australia, Trademark logos often are the face and reputation of a business, they are the most recognisable part of your business, so what should you be doing to protect the one thing that represents your business the most? Register a trademark to protect your logo before a rival does for a similar logo that blocks you from using yours.
A form of brand protection, trade marking allows you product or service to be distinguished easily from your competitors. It also makes the logo exclusively yours to use or assign the rights use, and affords you certain legal rights if you discover someone unauthorised usage your logo.
Eligibility
Who is eligible to own a trademark? Not anyone can own a trademark, ownership is specified in the Trademark Act 1995. IP Australia, who are the Government Department looking after Intellectual Property in Australia, do not review whether ownership is correct.
There are many trademark ownership requirements, for example, the trademark owner needs to be either an individual, a company or an incorporated association, or any combination of these should the owner of the logo be multiple entities, but NOT a registered business.
Another example is that the Owner must also have a physical address within Australia or New Zealand, and you must use or intend to use the trade marked logo in relation to the services included in your application.
Important Facts
Your trademark is important to your business and you want to keep it, so you must use it in the correct way as required by the Trademark Act. Otherwise your trade marked logo could be removed from the register, leaving it open to be used or registered by someone else if you fail to use it for three years. So, it’s important that your registered trademark is regularly audited by your Trademark Attorney .
Also, if you re-brand or change your logo, you will need to seek advice on updating your trademark rights.
Your trademarked logo is only registered for ten years, IP Australia will send you renewal reminders, so make sure that Australian or New Zealand address is current. The advantage of a Trademark Attorney is they will make a phone call if they don’t hear back from you, whereas IP Australia won’t provide this service, they will allow it to lapse.
What can be trademarked?
A lot of different types of branding can be trademarked, not just logos. If your logo contains your company name, you could have two trademark applications to provide proper trademark protection. A Trademark Attorney can advise you on whether this is required.
Other than logos and designs, branding for words or phrases, lettering and numbers, even packaging, colour and shape can be trademarked.
Process
The process to register your logo as a trademark is complex and can take 8 months, only for it to be determined that it is unable to be registered. To make things easier in the long run, it is always a good idea to consult with a Trademark Lawyer, experienced in the process and who completes these activities on a daily basis. You do not have to engage the top expert Intellectual Property lawyer, you are however less likely to make costly mistakes if you consult with a a less experienced lawyer.
To get started, make sure that your logo is clearly distinguishable from the logos of your competition, but also from other logos in your industry. If your logo is too similar to a competitor it can cause consumer confusion and the logo would not be registered.
IP Australia allows you to search logo and trademark databases for any conflicts with other logos. The difficulty you will have by doing it yourself, is you won’t know how close or how different you have to be from other word or logo trademarks to not infringe. Only a Trademark Lawyer can determine this for you. This is a search any Intellectual Property lawyer would do as part of their process, so it helps if you can do this before seeing one. But don’t rely on this search yourself.
Experienced Attorneys are trained for many years to ensure that a rival trademark is not missed, otherwise the consequences of a trademark infringement could be dire, including Court summons for compensation and legal costs.
Completing this conflict search is crucial in the application process; if a similar logo is found by IP Australia in the registration process, you may lose the money paid as part of the application and can extend the time it takes to trademark your logo.
What happens if you come across a similar logo?
You have a couple of options if you find a logo in your search that is similar to yours. You are of course able to change your logo design, this is handy if you have multiple logo options, you could simply pick another one.
You could try registering under another class, although, classes are linked to the goods and services your business is providing, so registering under a different class could still be a trademark infringement for you.
If your logo was in use before the registered party, you could seek legal advice from your Trademark Attorney about whether they could argue the case for you. This is a particularly tricky process and is best left to professionals because any information you submit to IP Australia is on the public record and could be used against you by a Third Party rival who obtains that information with a Freedom of Information request.
Trademark professionals are there to make sure your registration goes as smoothly as possible. Registering a logo is time consuming and complicated, so having a professional in your corner can ensure your application is accepted first time around without complication, and also to correct any poor decisions made in rejecting your Trademark Application.
A Trademark Lawyer will also make sure your application is complete before submitting to IP Australia. This is critical because you cannot modify or amend to include anything else once lodged. Your Trademark Lawyer will help you with detailed descriptions of your logo and its components, and you will need to submit a high-resolution image with your application as well. Your Trademark Lawyer will help you put together your application to make sure you are protected from all angles, even down to the font used in your logo and whether the logo is black and white or full colour. It all matters when registering your trademark, and also if it will actually stop a third party or not.
Which Class?
There are 45 classes to choose from in Australia, across Goods and Services. IP Australia has a handy tool that allows you to search by key word and they will generate a list of possible classes applicable to your application. Your Trademark Lawyer usually won’t use this as sometimes it can restrict cover, and scope of your trademark rights. Selecting the correct class is important and ensures the trademark is registered correctly. This cannot be fixed after the application is lodged.
If your business runs across two or more classes, you will need to make a choice as to whether you register it under all of those classes or only the most important ones to your business. Bearing in mind each class your look to register has a fee.
Once your application is complete and your application is lodged, it then goes to an examiner for assessment in 4 months time. If your application is accepted, there is a period of opposition that must be served, at 6-8 months after filing the application. During the two month opposition, anyone can lodge a complaint or contest the trademarking of your logo. Again this is why comprehensive research is recommended before lodging a trademark. You don’t want an opposition 8 months after applying
If there are no contests, your logo is ready for trademark registration. But again, a registration can be contested at Court, and if a judge agrees you weren’t entitled to the registered trademark, he will order IP Australia to remove it. Again, this is why you should always consult from the outset with a specialist Trademark Lawyer.
Once registered, your trademark is valid for ten years and you must renew between 12 months prior to or 6 months after the renewal date. You must also use the trademarked logo, a Trademark Lawyer can help make sure you are using the logo and that your logo is protected for the ten years.
Please contact us today if you want our Trademark Attorneys to represent you.
Whilst trademarking a logo is not mandatory, it is a good idea if you are in a particularly competitive market, and just want to protect your intellectual property and business.
