Frequently Asked Questions

A trade mark is any sign (such as a word, image, sound, smell, etc.) that is capable of distinguishing the goods/services of one trader from the same or similar goods/services of another trader.  

Whilst it is not obligatory to register a trade mark, registration provides the most secure form of protection for your valuable IP assets and can provide a solid platform for IP based business models such as franchises and the like. Request a Factsheet on the benefits of trade mark registration.

When you trade or conduct business under a name other than your own you are required to register that name as a business name if you are trading as a sole trader or partnership, or a company name if you are trading as a company. However, registration of a company or business name does not confer any legal ownership of that name. The only way to establish ownership of a name is under trade mark law. By registering your company or business name as a trade mark you gain exclusive rights to the trade mark in relation to specified goods and services throughout Australia and in any other country in which registration is sought.

The most common grounds for refusing an application for registration are (i) lack of distinctiveness and (ii) conflicts with existing trade marks.

Many trade marks, such as words or images, that are often used to describe the goods/services being provided are likely to be required by other traders to describe their similar goods (for example: ‘fruity’ or ‘Margaret River’ for a wine).  Such words or images that can be considered directly descriptive of the relevant goods/services are generally not deemed sufficiently distinctive to qualify for registration – unless they have been used for a long period of time in the marketplace and thus have become well-known as being associated with a particular business or product. 

Two trade marks will conflict if they relate to the same or similar word(s) or image(s) and have been used or registered in respect of the same or related goods/services.  When comparing two trade marks, what is too similar will vary from case to case, but the inclusion of additional descriptive words is unlikely to constitute a sufficient difference. For example, an existing trade mark for MACRO for a beer is likely to prevent another party from registering MACRO-LIGHT or MACRO-PREMIUM in respect of beer.

With respect to the comparison of goods and/or services it is a matter of looking at the two sets of goods/services and determining, among other things, whether it would be likely for the goods being compared to emanate from the same trade source or occupy the same trade channels.  An example of this would be a trade mark already registered for bottled water would be unlikely to be registrable by another party in relation to bottled fruit juice as they are both bottled beverages.  Another example, would be a trade mark registered for hats would be unlikely to be registrable by another party in relation to t-shirts as they are both articles of clothing.  

In short – yes.  Whilst there is no requirement to undertake searches prior to filing an application to register a trade mark, it is best practice to do so as it provides the earliest indication of registrability and can also identify potential freedom to operate issues. So, unless special circumstances apply, we always recommend undertaking a staged process for protecting trade marks – searches followed by applications. You can get started with our free initial search service.

We can carry out a free initial search for you if you complete our free initial search form. This search seeks to locate directly conflicting trade marks – but the results cannot be used to determine the registrability of your trade mark. We also recommend you do your own internet based searches for similar trade marks in use by third parties, especially for the same or similar goods or services. There are also a number of free online resources for searching trade marks. Below are links to the official Australian and New Zealand trademark databases:

Australia http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start

New Zealand http://www.iponz.govt.nz/app/Extra/IP/TM/Qbe.aspx?sid=635173811288469704

It is often important to have a domain name that is the same or includes your trade mark. Thus, when selecting a new trade mark you should also determine the availability of a suitable domain name. Domain name searches can be carried out at a variety of sites including:

http://instantdomainsearch.com/

http://www.domainregistration.com.au/

http://www.netregistry.com.au/

This article from Cloudwards provides additional useful information on the factors to consider when registering a domain name:

 https://www.cloudwards.net/how-to-register-a-domain-name/

If you file an application without a formal pre-filing search it will take up to 6 months before you receive a ruling from IP Australia in relation to your application.  Thus, if you have a formal pre-filing search undertaken prior to filing you can proceed with an application for registration with a much clearer understanding of your prospects and costs for securing registration. If you would like O’Sullivans to conduct a formal pre-filing search please contact us so we can make the necessary arrangements for the search.

Typically, the costs (including official fees but ex GST) for undertaking a search, preparing and filing a trademark application to protect a single trademark, and securing registration for 10 years covering goods/services in one class in Australia are about $1500 (~ $150/year). This estimate assumes a clear formal search that results in a straightforward examination process. The key thing to note here is that if the trademark has been the subject of a clear formal search report then it is highly likely that the examination costs (costs incurred in overcoming adverse examiner’s reports) will be negligible.

Following the initial 10 year registration period, registered trademarks can be renewed indefinitely for 10 year periods upon payment of the required renewal fees. O’Sullivans stores details of all of our clients’ IP matters and sends reminders regarding deadlines as they approach.

You can seek to file international trademark applications yourself or appoint an attorney to assist you. We regularly handle overseas trademark applications for our clients and, given the complexity of the process, strongly recommend that you appoint a local attorney to assist you secure overseas trademark rights. There are a few different options for securing overseas trademark rights and the best option depends on the countries of interest and your overarching business strategy.

There is no strict deadline for filing overseas applications but there are substantive benefits to be gained by filing overseas applications within 6 months of the filing date of the first application for registration. The benefits gained by filing within 6 months must be balanced against the costs and timing in your business plan for expanding your business internationally.

It's also important to note that many countries outside of Australia operate on a "First to File" such as China and a number of European and South East Asian countries.  Common law rights (rights gained through use of a trade mark) exist in Australia but dont really exist in these countries so it's particularly important to secure registered rights in these First to File countries before you invest in these markets.

In terms of distinctiveness, trade marks can be categorised from strongest to weakest as set out below.

1. Newly coined or “invented” trade marks (STRONG)

The strongest type of trademark is an invented word that has no meaning other than as a trade mark. GOOGLE, FACEBOOK, PEPSI and SAMSUNG are well-known examples.  While invented word marks may be more difficult for a consumer to remember at first, in the longer term the success of the product or service results in a very strong, positive and unique association between the mark and the associated product, service, or business.  For these reasons, newly coined or invented trade marks generally are afforded the broadest scope of protection against third-party use.

2.Arbitrary trade marks (STRONG/MEDIUM)

Arbitrary trade marks have a common meaning but are used to distinguish a product or service that is unrelated to that meaning. Well-known examples of arbitrary marks are APPLE (for computers/software), ORACLE for software, and VISA for credit cards.

3. Suggestive Marks (MEDIUM)

Suggestive marks indirectly indicate or suggest a quality or characteristic of the products or services upon which they are used.  However, they are not words that would ordinarily be used by traders to describe their similar product or service.  Examples of suggestive marks are PAMPERS for nappies, MASTERCARD for credit cards.  The more a suggestive trade mark indicates a character or qualify of the product or service upon which it is used the more difficult it will be to register and enforce.

4. Descriptive Marks (WEAK)

Descriptive marks convey information regarding a quality or characteristic of the product or service upon which they are used.  These types of trade marks are often the first put forward as candidates because they make it easier to identify what a product or service is.  However, it is not the role of a trade mark to identify or otherwise describe the nature or characteristic of a product or service and it is very difficult to register and to prevent others from using directly descriptive trade marks because of the need (without improper motive) for other traders in the relevant goods or services to accurately describe them.  Examples include AUSTRALIAN AIRLINES for airlines, HOT & SPICY for take-away chicken, or merely laudatory terms such as “top”, “best” or “quality,” that merely describe attributes of the product.  

Whilst it may be possible to register a descriptive trade mark that has been in use for many years, to the extent that consumers associate it with a single source or origin for that product or service, the costs for securing registration of descriptive marks is substantially increased the scope of protection afforded to them is often narrow or otherwise compromised.

5. Surnames/Geographic Locations (WEAK)

It is common for trade mark laws to prohibit, in the absence of long term use that demonstrates acquired distinctiveness, the registration of marks that are merely a common surname or the location/place where the products are made or from which the services emanate.  For example, SMITH is unlikely to be registrable, as it is primarily merely a common surname which may be shared by a number of people who may have interest in using it in association with a product or service.  Similarly, an application to register MARGARET RIVER or HUNTER VALLEY as a trade mark for wine would likely be unsuccessful (particularly in Australia but also in many other countries), as they are well-known wine regions and other wine producers in those regions have a need to use the location names to identify the origin of their products.

6. Generic Terms (WEAK)

A generic term is a word or phrase that is the common term associated with a particular category of products or services, and thus cannot function as an indicator of origin.  ASPIRIN and LAUNDROMAT are examples of terms that once functioned as trade marks but are now used in many countries as the common names for the products, regardless of their source.  Generic terms are not registrable or protectable.