The registration of a trade mark provides you with the exclusive right to use, license and sell the mark for the goods and services for which it is registered.
A trade mark is an element or sign that is used to distinguish your business or your product or service from that of a competitor. Common types of trade marks include business and product names, logos and slogans. Less common types of trade marks include sounds, scents, colours and shapes. For example, in Australia only one scent mark has ever been registered which is for a eucalyptus-scented golf T-shirt.
Trade mark registration vs Business name registration
It is important to understand that the registration of a business name is not the same as the registration of a trade mark.
The registration of a business name is administered by the Australia Securities and Investments Commission (ASIC). However, the business name registration does not give you any legal rights to stop others from using the same or similar business name. Even more so, the registration of a business name under ASIC does not protect you from infringing someone else’s trade mark.
Process to register a trade mark
An application for a trade mark can be filed in one or more classes which are selected based on the main products and services of your business.
Once the trade mark is filed at the Australian Trade Mark Office, the application undergoes an examination process where it is compared with other trade marks that are currently on the register. If the outcome of the examination process is positive, the trade mark application goes straight to acceptance followed by the registration of the trade mark. This process takes approximately 8 – 10 months.
If the Examiner of the trade mark application identifies any issues with the trade mark, a report will be forwarded to us in which these issues are outlined. We can advise you on the best ways to respond to such report.
There are two ways to file trade mark applications overseas:
- file an International trade mark application under the “Madrid Protocol”
- file a trade mark application directly in the country of commercial interest
If you have filed an Australian trade mark application and you wish to maintain the original filing date of this application (also referred to as “priority date”), the International or overseas application needs to be filed within 6 months of the original filing date. In this way, your International or overseas applications gets “back-dated” to your original filing date in Australia.
Why filing a trade mark application overseas?
If your business is selling or promoting goods or services to an overseas market, it is important that your trade mark – whether for your business name or for your goods and services – is protected. Failure to protect your trade mark in an overseas market, may have significant consequences. You may, for example, be excluded from using your own business name or may face the risk of infringing a registered trade mark.
Notably, even if a trade mark is a direct copy of your registered Australian trade mark, a third party can become the owner of the mark in another country, either by using the mark first in a first-to-use country or by filing an application first in a first to file country.
A prominent example for this is the “Burger King” trade mark. Have you ever wondered why Burger King is called “Hungry Jack’s” in Australia? This is because the trade mark “Burger King” was already taken by a small takeaway food shop in Adelaide, when Burger King Corporation was looking at expanding its business to Australia.
The Madrid Protocol is an International Treaty that allows trade mark owners to register a trade mark in any of the member countries by filing a single trademark application and paying only one consolidated set of fees.
The Madrid Protocol has currently 116 member countries, including the United States, the European Union, New Zealand and most of the ASEAN countries. Only two ASEAN countries have currently not joined, Malaysia and Myanmar. A list of current member countries can be found here.
There are two important factors to consider when filing an International trade mark application under the Madrid Protocol:
- You need an Australian trade mark application or registration
- The International trade mark application is dependent on your Australian application which means that any cancellation, restriction or amendment to your Australian application will affect the International trade mark application in the same way
Protecting your trade mark overseas using the Madrid Protocol is typically simpler and cheaper than directly applying to each country. This is particularly true if you wish to protect your trade mark in more than 2 countries. Another benefit of the Madrid Protocol is that you can add further member countries at a later date.
Filing a trade mark application directly in an overseas country typically involves engaging an attorney in that country who will handle the application on your behalf.
We recommend this option if you are only interested in one or two overseas markets and in countries that are not members of the Madrid Protocol, such as Malaysia, Canada and South Africa.
First-to-use / first-to-file
Most countries follow either a first-to-use principle or a first-to-file principle.
Trade mark law in Australia follows a first-to-use principle. This means that ownership of a trade mark is determined by whoever uses a trademark first in respect of certain goods or services. It is important that this use needs to be ‘as a trademark’ in the sense of a ‘badge of origin’ which indicates a connection between the particular goods or services and the person who applies for the trade mark.
Other countries that follow the first-to-use principle include the United States, Canada, New Zealand and Singapore.
In countries that follow the first-to-file principle, ownership of a trade mark is acquired through filing a trade mark application. This means that in these countries a trade mark owner can apply to register a trade mark without having used it previously. Important countries that follow the first-to-file principle include China, France, Germany, Japan, and Spain.