Trade marks are distinctive signs, symbols, logos, names, or other identifiers that distinguish the goods or services of one trader from those of others. They help consumers identify and differentiate products or services in the marketplace.
A registered trade mark is a valuable asset to your business, now and into the future.
Art & Commerce are intellectual property (IP) lawyers and trade mark attorneys based in Melbourne, with experience advising and implementing local and international trade mark strategies and defending individual trade marks in an increasingly competitive marketplace.
Below we set out an introduction to trade marks, and the benefits of trade mark registration.
Why register a trade mark?
Registering a trade mark provides superior protection for your brand and grants your business exclusive rights to use the mark in connection with the goods and services claimed in the protected classes.
A trade mark enhances a business’s reputation by helping establish a brand identity that can distinguish your products or services from those of other traders. It also symbolises quality and consistency to stakeholders and consumers.
Art & Commerce’s Melbourne-based IP lawyers and trade mark attorneys work with clients to get their branding right from the outset, by advising them on their choice of trade mark and providing research-based reporting on the registrability and potential for infringement of other registered and common law (unregistered) trade marks.
Art & Commerce also work with a network of international trade mark attorneys to implement international strategies with clients seeking to make their mark in the global stage.
What are the benefits of trade mark registration for your brand?
Registering a brand as a trade mark is a pivotal step for any company seeking to establish its identity and protect its intellectual property. Here’s why:
- Legal Protection
Registering a trade mark provides legal protection against unauthorized use of the brand by others. It gives the owner exclusive rights to use the brand for the goods or services it represents within the registered jurisdiction. This prevents competitors from capitalizing on the goodwill and reputation associated with the brand. - Avoiding confusion
A registered trade mark helps consumers easily identify and distinguish the products or services of one company from those of others. This reduces the likelihood of confusion in the marketplace, ensuring that customers can make informed purchasing decisions and maintain trust in the brand. - Asset value
A registered trade mark is a valuable intangible asset (ie non-physical) that can be appreciated over time. It adds value to the company’s balance sheet and can be licensed or sold to generate revenue. Additionally, it enhances the company’s attractiveness to investors, lenders, and potential buyers, as it demonstrates a commitment to protecting its brand identity. - Global protection
Trade mark registration can be secured in almost every commercial market worldwide. This is crucial for companies engaging in international trade or seeking to expand their market reach globally. - Enforcement rights
Trade mark registration also strengthens a rights owner’s ability to enforce its rights against infringers through legal action. It provides a clear basis for legal proceedings and remedies, including injunctions, damages, and seizure of counterfeit goods. - Brand reputation
A registered trade mark reinforces the rights owner’s brand reputation and credibility. It signals to consumers that the company is committed to quality and consistency, as it invests in protecting its brand from unauthorised use and imitation.
So how long does trade mark registration take in Australia?
After the initial drafting of the specification, and the trade mark application is filed, it can be registered in Australia in as little as 7.5 months, assuming there are no issues such as adverse examination reports or oppositions. This is because IP Australia needs to honour the priority date of applications from other countries for up to 6 months.
If issues do arise the trade mark registration process may be longer depending on the nature of the issue. We advise our clients on the expected time frames in these circumstances and keep them informed throughout the trade mark examination process.
What about unregistered trade marks?
Unregistered trade marks, also referred to as common law trade marks, are brands that have not been formally registered with a trade mark office. Instead, these trade marks gain protection through their use in trade and commerce.
The drawback of using an unregistered trade mark is that offers limited protections when compared to a registered trade mark. For example, while a user may attract some recognition in a local area, that reputation may not be enforceable in other regions. This can be problematic for online traders and brands with expansion plans.
Enforcing your rights in trade mark can also be more difficult. The owner needs to prove that the trade mark is distinctive and has acquired a reputation. This requires substantial evidence, which can be time-consuming and costly.
In contrast, trade mark establishes legal ownership of the trade mark. It also enables you to enforce your rights in the trade mark and acts a deterrent to others seeking to copying or use the same or similar mark. This effectively means that no one else can use the same or a similar mark in connection with similar goods or services.
In essence, registering a brand as a trade mark is essential for safeguarding the company’s intellectual property rights, maintaining brand integrity, and ensuring that consumers can confidently identify and differentiate products and services from competing traders.
How does Art & Commerce assist its clients?
We work hard to help you achieve your brand protection objectives and complete your matter promptly for a reasonable fee.
Art & Commerce also works with a network of international trade mark attorneys to implement international strategies with clients seeking to make their mark on the global stage.
We assist clients from the application stage through to trade mark registration in Australia and overseas.
Art & Commerce’s services include:
- Drafting and filing new Australian and International trade mark applications
- Trade mark and brand selection and protection advice
- Brand due diligence services
- Clearance searches
- Registrability and infringement risk advice
- Trade mark infringement and enforcement services
- Responding to adverse examination reports
- Co-existence agreements
- IP licence agreements
- IP assignment agreements
- Trade mark oppositions
- Non-use actions
- Trade mark portfolio management
- Watch services
- Trade mark/ portfolio monitoring services
- Drafting and filing submissions to the examiner
- Negotiating with other trade mark owners and their representatives
- Preparing for and attending hearings
Why engage a trade mark attorney?
While is possible to apply for a trade mark yourself, engaging a trade mark attorney provides specialised knowledge and experience in trade mark law. Trade mark attorneys understand the complexities of the application process (especially in choosing the rights descriptions and classes of goods/services), the criteria for registration, and the nuances of trade mark searches. Their expertise can help avoid common pitfalls and ensure a smoother application process.
In Australia trade marks attorneys are registered to practice under Australian Commonwealth legislation, namely the Trade Marks Act 1995 (Cth) and Trade Marks Regulations 1995 (Cth). Art & Commerce’s trade mark attorney is also a practising lawyer – which helps when a trade mark matter intersects with other legal issues, eg a business sale, co-existence agreements, IP licensing, infringement matters and preparing for hearings.
Being a registered trade mark attorney also means having an understanding of laws relating to other forms of intellectual property, for example, patents, designs, copyright, trade practices, domain names, circuit layouts, plant breeder’s rights and confidential information.
Generally, clients engage trade mark attorneys primarily to help protect, enforce and exploit their trade marks and associated rights, in Australia and internationally. They also have the capacity to manage larger trade mark portfolios and advise clients on their overall brand protection strategy in different markets, across various products and product categories.
So how do I engage a trade mark attorney?
Engaging with Art & Commerce’s trade marks attorney is simple. Either email us or book a free 15-minute consult via our website.
From there, we can discuss your proposed trade mark and what you trying to achieve in protecting your brand.
We can also advise you on the process of applying for trade marks overseas and the most cost-effective and efficient options to attaining brand protection.
As a fixed-fee firm, we will set out a clear scope of work and fixed-fee proposal to provide clarity and cost certainty.
So, if you would like to you want to discuss your trade mark application plan, yes please get in touch. We look forward to speaking with you!
Disclaimer
The information in this article is general in nature, does not constitute legal advice and should not be treated as such. You must not rely on this information as an alternative to legal advice from a qualified lawyer.