Understanding Trademarks in Australia: Protection, Registration, and Costs

In Australia, trademarks are governed by the Trade Marks Act 1995 (Cth) and the Trade Marks Regulations 1995 (Cth).

These laws guide IP Australia in regulating trademarks, ensuring consistency with international practices. Feel free to give us a call!

Trademark and Intellectual Property Infringement

We advise and litigate all matters including the following:

• The registration of your trade mark and design in Australia and overseas
• Addressing and responding to a trade mark and design opposition
• Defending a trade mark infringement claim and IP dispute resolution;
• Lodging a trade mark infringement and Lodging a design application
• Copyright advice & licensing
• Restraint of trade and Remedies for infringement of intellectual property rights
• Competitors wrong fully taking or using copyright material or original video or audio works
• Employees, directors or shareholders misappropriating and/or using your copyright material such as client lists, customer lists or information contained on your database,
• Ceased and Desists letters and letters of demand
• Advice on disputes relating to infringement and passing off trademarks and designs
• Seizing of counterfeit goods by way of injunctive relief and Counterfeiting and Privacy.

What is a Trademark, use and proof?

In the context of trademarks, “use” refers to the activities related to labeling, promoting, and presenting the trademark. When you use a trademark, it identifies the source of your goods or services and distinguishes you from competitors.

Keep in mind that having a trademark doesn’t mean you legally own a specific word or phrase in general; it only protects how that word or phrase is used with your specific goods or services. For example, if you use a logo as a trademark for your woodworking business, you can’t prevent others from using a similar logo for non-woodworking-related goods or services.

If you want broader rights, consider registering your trademark federally, across all of the states of Australia, which provides stronger protections.

To prove “use” for your trademark application, you’ll need to provide evidence of its commercial usage. Here are some ways to demonstrate use:

1. Specimens: Submit photographs, labels, packaging, brochures, or website screenshots that clearly display the mark used in connection with your goods or services.
2. Tag or Label: Attach the mark to items using tags or labels.
3. Marketing Materials: Show the mark on marketing tools, such as advertisements or promotional materials.
4. Market Share Reports: Provide data related to market share for the relevant goods or services. 5. Packaging Material: Include storage boxes and packaging material exhibiting the trademark.

IMPORTANT NOTE:

Maintaining proof of use throughout the life of your trademark is essential to keep its benefits and registration active

If you haven’t used your trademark in commerce yet but have a good faith intention to do so in the future, you can file an application to register your trademark with an intent-to-use (ITU) basis.

Here’s how it works:

1. Application: File a trademark application based on your intent to use the mark.
2. Proof of Use: Although you don’t need to use your mark in commerce before filing, you must show actual use by submitting documents and paying additional fees within specific time frames.
3. Claiming Use: Eventually, you’ll need to claim use in commerce when your mark is ready for commercial use.

Step-by-step guide on how to register a trademark in Australia:

1. Determine Ownership: Identify the rightful owner of the trademark, which can be an individual, a company, a trust, a political body, or a government entity.
2. Eligibility Check:
   • Reside (or have an agent residing) in Australia or New Zealand.
   • Intend to use the trademark for the specified goods and/or services.
3. Research and Preparation:
   • Understand the type of trademark you’re applying for.
   • Determine the relevant class(es) of goods and services.
   • Conduct a search to ensure your idea (or a similar one) hasn’t already been registered.
4. Choose an Application Service:
   • Consider using the Pre-application service (TM Headstart) or the Standard application online.
5. Gather Documentation:
   • Ownership and contact details.
   • Representation of your trademark (e.g., logo image or sound recording).
   • List of goods and/or services covered by the trademark, along with their class numbers.
   • Payment details.
6. File Your Application:
   • Create an account on IP Australia’s online services.
   • Fill out the application form.
   • Save your progress as you go.
7. Examination and Outcome:
   • Your application will be examined within three to four months.
   • If successful, your trademark will be published for two months.
   • During this time, anyone can oppose it.
   • If no oppositions occur or are overturned, your trademark application will be successful

Ready to start your application? Call us to assist you, we can set up an account with our online services portal to begin.