WNA Blog

Mon 9 Aug 2021

Six Common Trade Marks Questions Answered


Legal Services
I find it very rewarding to assist clients in identifying, protecting and managing their trade marks.

As I am working exclusively in the trade marks world, I thought it might be helpful to share here some common questions and myths that arise in my day-to-day practice. 

 

 

 

I’m only starting out – I can’t afford to file a trade mark application!

  • The answer here is – you really can’t afford not to protect it at this early stage.  What happens if you spend time and become financially and emotionally committed to your brand, and only when you launch you find out you are infringing another person’s trade mark registration?  Or if a competitor is watching you and decides to copy your branding, or worse still, files their own application for a similar brand? 

A trade mark registration legally protects your brand from copycats and provides you with the exclusive right to use, license and sell your trade mark to other entities.  Registration of your trade mark also provides a defence to infringement allegations from other parties – so, once registered rights are secured, you can proceed with confidence! 

When do my rights in my trade mark commence? 

  • Your rights in your trade mark actually commence as soon as you start using your trade mark on your goods/services.  However, these rights are limited and tend to only apply to the geographic area in which you are providing your products or services. 

When you register your trade mark, the registered rights are federal rights which commence from the date of filing your application.  Your protection extends to all states and territories of Australia. 

I have a domain name – does that give me trade mark rights in that domain name? 

  • Quite simply – no.  A trade mark, a business name registration, a company name registration and a domain name registration are all separate rights.  Owning one does not mean you automatically have rights to own another. 

Accordingly, registering a domain name does not give you any rights over the name as a trade mark.  The only way you can obtain such rights, is to register the domain name as a trade mark. 

How long does the registration process take? 

  • In Australia, there is a five to seven month delay between the filing of an application and the examination of same. After examination has been completed, the Examiner will either issue an Examination Report or a Notice of Acceptance.  If a Notice of Acceptance issues, the application will be advertised as accepted and third parties will have two months from the date of advertisement to oppose registration of the trade mark.  If registration is not opposed, the trade mark will proceed to registration. 

Accordingly, provided an Examination Report is not issued and registration of the trade mark is not opposed, a trade mark may proceed to registration in as little as seven to nine months.  Once registered, your registered rights extend back to the filing date of your application (your “priority date”). 

How long does a trade mark registration last? 

  • Your trade mark registration lasts for ten years, and is renewable at that time. 

When can I use the “TM” or “R” symbols on my trade mark? 

  • You may only use the “R” symbol when your trade mark is registered. 

For trade marks you are using that are not registered, you are not legally required to use a symbol.  However, I strongly recommend that owners use the “TM” symbol in this instance, to put the public on notice that you have any proprietary interest in the trade mark in relation to your goods and services.  This may assist your case if you need to enforce unregistered rights against a copycat. 

If you have further questions relating to protecting your trade mark/s, please don’t hesitate to contact Geraldine geraldine@mbip.com.au 


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