A trade mark can be any mark that is used in business in the course of trade and may comprise of a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging, or any combination of these. A trade mark can be defined as a sign that is used to distinguish the goods and services of one trader from those of another. A registered trade mark gives the owner of the mark the exclusive right to use, license or sell the mark within Australia for the goods and services for which it is registered. It is important for each owner of a trade mark to choose the correct class of goods and services in which to register the trade mark, as protection will only be given in relation to the goods and services for which the trade mark is registered. Goods and services are divided into different classes according to an international classification system, which comprises 34 classes of goods and 11 classes of services.

Trade marks cannot be registered if they are substantially identical or deceptively similar to previously registered trade marks, and/or they are generic in nature or describe the goods or service which they wish to protect. 

How long does it take to register a trade mark?

Once an application to register the mark(s) is filed with IP Australia (IPA), a trade mark examiner will review the application within approximately 4 to 5 months from the filing date. The examiner may or may not raise objections to registration of the mark(s). If objections are raised, you will need to prepare and file submissions in support of registration of the mark(s). If your submissions are successful and the applications are accepted for registration, the details of the applications will then be advertised in the Official Journal of Trade Marks. Following the date of advertisement, there is a 2 month period in which third parties who believe that the mark(s) should not be registered, may oppose registration of the mark(s). If there is no opposition, or if you successfully contest any opposition proceedings, the mark(s) will be registered upon payment of the registration fee. A straightforward trade mark application without any significant objections raised by the trade mark examiner may take around 7 to 8 months from the date of filing the application to actual registration of a trade mark.

Can I use the TM or ® symbol on website and other documents?

In Australia the use of the TM or ® symbol is governed by the Trade Marks Act 1995 (Cth). It is important to note that the TM symbol and the ® symbol are two (2) completely different symbols and different laws and rules apply for the use of these symbols.

In respect of the TM symbol, this symbol can be used for both registered and unregistered trade marks, but generally the use of this symbol is used for those marks that are not registered with IP Australia.

In contrast, the ® symbol is a symbol that can only be used for trade marks which are registered with IP Australia. In this respect, it is unlawful for a person or company to use the ® symbol against a mark which is not registered with IP Australia. It is an offence under the Trade Marks Act 1995 (Cth) to use the ®symbol in relation to an unregistered trade mark and penalties therefore apply.

If you would like to discuss registration of a trade mark, or have had objections raised against your application for registration of a trade mark, please contact Emily to see if we can assist you.

The content of this article is intended in the nature of general information, and cannot be relied upon as legal advice. You should seek specialist advice about your particular circumstances.