Trade mark registration

You may currently be exploiting the intellectual property of your business or organisation by using an unregistered trade mark.  If this is the case, in any action you may wish to take against someone who is infringing your trade mark you will need to prove all of the following:

1. misrepresentation by the alleged infringer as to the provenance of the goods and/or services they are promoting;
   
   
2. your own reputation and goodwill in the unregistered trade mark; and
   
   
3. actual or potential damage resulting from the misrepresentation.

Proving these elements can be extremely costly and time consuming and even then, demonstrating a convincing case to the Courts can be very difficult.

As the owner of a registered trade mark you have a prima facie right to use that mark in relation to the goods and/or services in which the mark is registered.  A person who uses a mark that is identical or deceptively similar to your mark infringes your trade mark rights.  Therefore upon establishing such use you become entitled to obtain orders from the court preventing the person from continuing to use that mark, as well as damages or an account of profits.

Litigation is a course that is best avoided.  The existence of a registered trade mark in our view minimises the prospect of you having to litigate to protect your brand name because its presence on The Australian Trade Marks Register significantly minimises the prospect of:

1. inadvertent use by other marketplace participants who are developing a logo and actively seeking to avoid infringing other registered trade marks; and
   
   
2. infringement by others who would otherwise take advantage of the trade mark’s unregistered status.

Registering your trade mark can therefore save the pressure of both costly and time-consuming litigation and temporary or permanent diversion of custom from your goods or services.

Traditionally, trade mark registration has been seen as a cumbersome and expensive process and there is a common misconception that this is still the case.  To the contrary, there are several processes available to register a trade mark and the TM Headstart process in particular is straightforward and relatively inexpensive.  There is consequently a high likelihood that registering your logo using TM Headstart makes sound commercial sense. 

TM Headstart trade mark application process

TM Headstart is an efficient and informative trade mark application process that provides the applicant with an opportunity to amend an application if it is initially deemed unsuitable for registration.

If you have an existing logo that you wish to protect with trade mark registration and it is not your priority to afford trade mark protection to that logo from the earliest possible date, TM Headstart is an ideal process to assess the logo’s suitability for registration before following on with registration itself.  It is a time critical process so all time-frames must be strictly adhered to or the application will lapse.

Part 1 Stage

Part 1 of the process takes place prior to filing the application.  We submit your proposed trade mark, together with a fee of $90.00 per proposed trade mark per class of goods and/or services, to IP Australia to obtain a preliminary assessment as to the suitability of your proposed trade mark for registration.  IP Australia sends their preliminary assessment within five working days of submitting the Part 1 application.

If IP Australia identifies potential problems with your application, the preliminary assessment will provide you with the opportunity to amend the application or the class(es) of goods and/or services in which you have submitted your application.  Any amendments to your application must be submitted to IP Australia within five working days of receiving their preliminary assessment.

Part 2 Stage

At Part 2 of the process, payment of a further $90.00 per proposed trade mark per class of goods and/or services is required.  The application is filed as a formal application and this becomes the filing date.

Examination

From this point, the application falls into the standard application process, with the benefit that IP Australia undertakes formal examination within two weeks of the filing date, as opposed to three months if the application was filed through the standard application process.

Opposition, registration and post-determination

Trade mark legislation stipulates the time-frames for the remaining stages of the application process, those being ‘opposition’, ‘registration’ and ‘post-determination’.  The proposed trade mark will be advertised in IP Australia’s Official Journal of Trade Marks at about four months from the filing date of the application, the period of this advertisement is three months and provided there is no successful third party opposition to the trade mark application, the earliest date the trade mark can be registered is 7 ½ months from the filing date of the application.  IP Australia’s registration fee is $250.00.

Below is a summary of IP Australia’s fees for the TM Headstart process:

In addition, Lavan Legal charges a fixed fee for filing and managing your TM Headstart trade mark application from the pre-filing stage to registration of your trade mark.

Lavan Comment

TM Headstart stands out as a fast and cost-effective process.  For the small fee of $90.00 per trade mark per class of goods and/or services, IP Australia provides a reliable indication as to your logo’s suitability for trade mark registration.  In the case of deemed suitability for registration, this offers a certain level of confidence throughout the remainder of the trade mark application process and where problems are identified, feedback is given as to the aspects of the application that require amendment, together with an opportunity to amend the application. 

Trade mark protection can be a wise investment to maximise the value of goodwill and branding in your business.  If you consider that there may be value in your organisation’s logo(s), we highly recommend the service to assess the facility of protecting that intellectual property to safeguard your commercial interests.

For more information please contact Wayne Zappia, Partner on (08) 9288 6931 or wayne.zappia@lavanlegal.com.au.