FREQUENTLY ASKED QUESTIONS
Trade mark applications can seem complicated but our experts can assist in making your experience as stress-free and simple as possible. Below are a number of frequently asked questions we receive on a regular basis.
Looking for classes of goods and services? Either scroll down or click here to skip ahead.
What are trade marks?
Trade marks can be your most valuable marketing tool as they are used to distinguish your goods or services from the rest in the marketplace. Trade marks can be words, names, symbols and logos, so long as the mark distinctly identifies your company against your competitor’s. As a representation of the goodwill and value of your brand, trade marks are valuable intellectual property.
The best way to protect your trade mark is to register it with the Australian Trade Marks Office. Registering confers you with significant benefits (see the FAQ “Why Register My Trade Mark” on this page).
To be able to be registered, your trade mark must:
- Be capable of distinguishing your goods or services
- Not be deceptively similar to a trade mark already registered.
Whether starting a new business or launching a new product range or service offering, we recommend considering whether registering a trade mark might be a good option for you.
What does "capable of distinguishing" mean?
Your trade mark cannot be registered unless it is capable of distinguishing your goods or services. A question you should ask yourself is, ‘in the ordinary course of business and without improper motive, would another trader be likely to need to use the same or a similar trade mark in relation to their own goods or services?’ If the answer is ‘yes’ then it is unlikely that the Trade Marks Office will grant your trade mark application.
Think: Steve the grocer could not register APPLE for his apple fruit range he sells as other grocers will ordinarily need to use the same word for their products. However, if it was 1975 and Steve wanted to trade mark APPLE in relation to computer goods, he would be able to as at that time no other computer providers ordinarily used the word APPLE to sell their computer goods.
Why register my trade mark?
There are SO many reasons to register your trade mark, including:
- Most importantly, registering your trade mark gives you exclusive rights to use and control the use of your trade mark in relation to your goods and services.
- The ability to demand that others stop using counterfeit or confusingly similar trade marks in relation to similar goods or services in Australia without having to prove you own the mark and your reputation in it.
- Preventing others from registering the same or similar trade marks, then seeking to recover money from you to sell the mark to you.
- Add tangible, transferable intellectual property assets to your business. These could be invaluable in the event you want to sell your business down the track.
- Show clients you are a credible organisation.
- As a disincentive for others to rip off or illegally copy your trade marked intellectual property.
Why not just do the search or application myself?
Quite simply, because for most businesses, your branding and trade marks are the most important aspect of your goodwill. Using our registered lawyers and trade mark attorneys will allow you to:
- Have peace of mind that an expert has drafted your trade mark specifications to cover all appropriate goods and services in which you use the trade mark. Thus avoiding the situation where an inadequately self-drafted trade mark application does not properly protect you.
- Have comprehensive searches conducted on your proposed trade marks to ensure there is no one out there already using your mark.
- Not have to worry about the process, as the application and registration stages are managed on your behalf. Our Experts will keep you updated throughout the process.
- Have each step of the process explained to you in an easy to understand way, without overcomplicating the process.
- Avoid having your trade mark application delayed by being continuously objected to by the Trade Marks Office for administrative or drafting errors.
Lastly, Government fees make up more than half of the costs of each stage. These are payable even if you file the trade mark yourself. Filing a trade mark from the outset with Title Trade Marks™ will allow the process to be as painless as possible and avoid you having to incur more fees fixing up your trade mark down the track.
I already have a business name or domain name registered, isn’t that enough?
Quite frankly, no. Business name registration confers no legally enforceable rights, it is simply a statutory requirement in Australia when a person is trading under a name which is different to that person’s name. It does not give you any legal rights to stop anyone else from using the same or a similar name, nor is it a means for you to obtain any monopoly or rights in your business or company name – it is quite simply a Government requirement.
Domain name registration is a good idea and should be derived from your company name; business name or trade mark. However, domain name registration does not give you exclusive rights to use your domain name.
Trade mark registration, on the other hand, confers substantial legal rights to stop other traders from using the same or a similar name. To put yourself in the best possible position to stop competitors from copying your mark, you need to register it as a trade mark.
What are classes of goods and services?
When you apply for a trade mark you must outline what goods and/or services you want to use your trade mark in relation to. In Australia by international agreement, all goods and services are categorised into 45 classes (1 to 34 are classes of goods and 35 to 45 are services). The classes are generally the same internationally which makes registering in other countries a relatively simple process. You can quickly scroll down to see how the various types of goods and services are segregated by clicking here.
You can apply for as many classes as you use your trade mark in relation to. However, the costs increase with each class that is added both to register the mark and when you want to renew your trade mark. When you conduct a search with us we will tell you what classes you should file your trade mark in relation to.
We suggest applying for classes that you USE your trade mark in relation to.
What classes do I USE my trade mark in?
To help you decide what are the right classes of goods and services to apply for, you should consider
- What products or services does your business provide?
- What do you derive your business income from?
- What is the nature of your business?
- What are you known for by your clients?
By way of example, even though APPLE might make promotional hats and clothing, they would usually file a trade mark for the classes that include computer products and computer services not clothing. The reason being, even if the trade mark appears on other items, in essence even when placed on clothing it is promoting computers and computer related services not clothing.
Rest assured, your Title Trade Marks expert will give you all the guidance you need on the appropriate classes for your business if you conduct a search, or file a trade mark application with us. Also, our experts draft bespoke class specifications to exactly suit your needs.
When does my trade mark start being protected?
Subject to certain restrictions and reaching registration, your trade mark is protected from the date it is filed regardless of other trade mark applications filed after it, no matter how long your application process takes.
What do I do if my trade mark search results come back with similar trade marks?
When we conduct a trade mark search, we will always advise you of the likelihood in our view that your trade mark will proceed to registration unopposed by the Trade Marks Examiner. If we notify you that there are already similar or the same trade marks that are pending or registered, we will always provide you with a suggested course of action.
What this solution is will depend on your prior use of the proposed trade mark or whether there is a suitable alternative trade mark you could file that is sufficiently different to those trade marks already registered.
What type of search should I do?
We always recommend going with the Advanced Search as it provides a more comprehensive outline of any other uses of marks the same as, or similar to, your proposed trade mark.
To see what’s included in each type of search click here.
You may wish to pursue a Basic Search if you have been using your trade mark unregistered in Australia for some time and are relatively sure that you are not infringing anyone’s third party rights.
We always recommend an Advanced Search as it provides you with a more complete understanding of the registrability of your trade mark. You should always conduct an Advanced Search prior to filing a trade mark, especially if your proposed trade mark:
- Has not been used before;
- Will be used online; or
- Is somewhat similar to other trade marks you have seen before.
Who will be handling my trade mark application at Title Trade Marks?
At Title Trade Marks we pride ourselves on only permitting registered Australian lawyers and trade mark attorneys to submit your trade mark applications and provide advice.
When you apply for a trade mark you will be delegated a registered lawyer or trade mark attorney. This Title Trade Marks expert will have personal carriage of your matter and be available to answer any questions you might have.
How long does the process take?
As a result of international treaty, it takes a minimum of 7 months from the date you file an application to secure full registration in Australia. This timing can increase depending on how busy the Trade Marks Office is and whether there are any oppositions or objections to your trade mark application.
How long is my trade mark registered for?
Once your trade mark is registered, it is initially registered for 10 years. Every 10 years a renewal fee must be paid. Provided the correct fee is paid in time your trade mark can last indefinitely.
We can manage your trade mark including providing you with reminders to pay the renewals every 10 years.
Opposition and objection – what are they?
During the trade mark application process, there are generally two types of actions that can prevent your trade mark from proceeding to registration. These are:
- Objections: by the Trade Marks Office to the registration of your trade mark; and
- Oppositions: by third parties who wish for your trade mark not to be registered.
During the examination period, the Trade Marks Office Examiner may object to your trade mark application. This objection is usually in the form of a report, stating:
- That clarification is needed about descriptions of goods and/or services applied for;
- There is one or several trade marks already registered or pending that the Trade Marks Examiner believes conflict with the trade mark applied for;
- That the Trade Marks Examiner does not believe the trade mark application is capable of distinguishing your goods and services (for example, if other traders would need to use it in the ordinary course of business without improper motive); and/or
- That the Trade Marks Office Examiner does not believe that your trade mark should be registered for various other reasons (that it is offensive etc).
Under objection option (b), the Trade Marks Office Examiner might find a trade mark as in conflict with your trade mark if the Trade Marks Examiner thinks it is:
- Identical or deceptively similar to your trade mark (for example, if the word sounds the same despite slightly different spelling or if the images look similar or have similar main features); and
- Registered in relation to similar goods or services.
Should one of these objections arise, we will advise you of the objection and whether it is likely that you could overcome the objection and get your trade mark registered.
Once your trade mark has passed the Trade Marks Office examination and proceeds to the registration stage, for a period of two months it is open for third party oppositions. Oppositions can be filed by any person in the community who believes that:
- Your trade mark is identical or very similar to another registered or pending trade mark or trade marks;
- Deception or confusion is likely because of the reputation of another trade mark(s) in Australia; and/or
- You are not the true owner of the trade mark (for example, someone else has used the trade mark first in Australia in relation to similar goods or services).
In the event your trade mark is opposed, we will provide an outline of the third party’s ground of opposition and advise you of the steps needed to be undertaken to overcome the opposition as well as your likelihood of success if that can be determined.
When can I use the "™" and "®" signs next to my trade mark?
If you have a name, image or slogan that you use in business, have goodwill in and it is important to your business, you can and should use a ™ symbol nearby. This represents to other parties that you use your name, image or slogan as a distinctive trading mark of your business however, you cannot use the ® symbol in Australia until you have a registered trade mark. It is an offence under the Trade Marks Act 1995 (Cth) to use the ® symbol in Australia without having a registered trade mark.
To apply to register your trade mark and begin using the ® symbol when registered, click here.
Can I amend my trade mark or the goods or services I applied for?
Once your trade mark is filed, you cannot add any extra goods or services to your trade mark application nor can you change the word or image applied for without re-filing your trade mark application again (which will incur the filing fees over again). This is why we seek your approval of the draft trade mark specifications before filing on your behalf.
If you need to add extra goods or services to your trade mark down the track, this can be done by filing another trade mark application for the same trade mark in relation to those goods and services. However, it you want to remove goods or services already applied for this can be done without the need to re-file.
I want to assign or sell my trade mark. Help!
Our Experts can help you by preparing the necessary paperwork to assign your trade mark. Please email [email protected] for further details about this process.
Are there any types of trade marks I can’t have?
Quite simply, yes. There are various marks that cannot be registered and these fall into the broad categories of:
- certain prescribed signs (for example, the words ‘Registered’, ‘Copyright’, images of the flag, coat of arms or a government seal);
- marks that cannot be represented graphically (for example, texture);
- marks that do not distinguish the applicant’s goods or services (for example, trade marks that include signs ordinarily used to indicate kind, quality, intended purpose, value, origin or some other characteristic such as GREEN APPLES for an apple business);
- marks likely to deceive or cause confusion (for example, noting a country that has no connection to your goods or services in your trade mark – such as FRENCH SILK for an Australian silk product);
- marks that are scandalous or their use is contrary to law (for example, swear words, trade marks in bad taste or trade marks that are misleading or deceptive);
- marks that are identical or deceptively similar to trade marks already registered or pending (our trade mark searches will locate if there is anything that is likely to stand in the way of your trade mark application).
Does my trade mark registration give me protection overseas?
No, your trade mark will only provide you with registered trade mark protection in Australia.
If you wish to obtain overseas trade mark protection, please email us with an outline of which countries you wish to seek trade mark protection in and we will provide you with an outline of that country’s trade mark process and a quotation.
Can I get a worldwide trade mark?
No. Unfortunately (for us both) there is no worldwide system for trade mark registration. However, our experts can advise you on the appropriate strategies to protect your trade mark overseas. Just email us at [email protected] to get the process started.
Who files my trade mark for me when I use Title Trade Marks?
Only registered Australian lawyers or trade mark attorneys will file your trade mark application on your behalf. Our team consists of only the best intellectual property lawyers and trade mark attorneys. Through our website we merely facilitate your contact with these talented professionals at an affordable price.
We have based our NewLaw business model on our continuous commitment to innovation and excellence. So we can attract the best talent, our lawyers and trade mark attorneys are contractors who understand the need for flexible work practices in an evolving world.
What is your Registration Guarantee?
We will provide you with a Registration Guarantee if you conduct an Advanced Search with us and our expert’s search results come up clear. The Title Trade Marks Registration Guarantee means that if your trade mark is rejected by the Trade Marks Office, our experts will file a second trade mark application for you with identical goods and services specifications free of charge (excluding
Government fees which will still be payable). For more information on Government fees, visit our Pricing Page.
Please note that our Registration Guarantee is not permitted for Basic Searches, only Advanced Searches.
When can I expedite my trade mark application?
You can apply to have your trade mark application reviewed ahead of time rather than the ordinary three to four months in some circumstances. The Trade Marks Office will only allow a request for an expedited trade mark application if your reasoning is acceptable to the Trade Marks Office.
Examples of grounds which may warrant an expedited examination being granted are:
- court action is expected or underway;
- you will be severely and irreparably disadvantaged in the market place if it is not expedited (for urgent commercial reasons or other reasons);
- you have located a potential infringer of your trade mark (if this is the case, please give details to your Title Trade Marks lawyer); or
- you have made considerable outlays to promote the trade mark so protection is needed as soon as possible.
Please let your Title Trade Marks lawyer know if you wish to apply for your trade mark application to be expedited.
CLASSES OF GOODS AND SERVICES
There are 45 categories of goods and services (called ‘classes’) in which you can apply for a trade mark. You have the option of applying for your trade mark in one or more of these 45 classes as listed below.
When you conduct a trade mark search through our site, our experts will advise you which class or classes are best suited to your trade mark. Click here if you want to know how to choose the classes that you use your trade mark in.
- Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fi re extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
- Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
- Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
- Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
- Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
- Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
- Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines.
- Hand tools and implements (hand-operated); cutlery; side arms; razors.
- Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment, computers; computer software; fi re-extinguishing apparatus.
- Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials.
- Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
- Vehicles; apparatus for locomotion by land, air or water.
- Firearms; ammunition and projectiles; explosives; fi reworks.
- Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments.
- Musical instruments.
- Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
- Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
- Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas and parasols; walking sticks; whips, harness and saddlery.
- Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
- Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
- Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
- Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
- Yarns and threads, for textile use.
- Textiles and textile goods, not included in other classes; bed covers; table covers.
- Clothing, footwear, headgear.
- Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
- Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
- Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
- Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.
- Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; fl our and preparations made from cereals; bread, pastry and confectionery; ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; ice.
- Grains and agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals, malt.
- Beers; mineral and aerated waters and other non-alcoholic beverages; fruit beverages and fruit juices; syrups and other preparations for making beverages.
- Alcoholic beverages (except beers).
- Tobacco; smokers’ articles; matches.
- Advertising; business management; business administration; office functions.
- Insurance; financial affairs; monetary affairs; real estate affairs.
- Building construction; repair; installation services.
- Transport; packaging and storage of goods; travel arrangements.
- Treatment of materials.
- Education; providing of training; entertainment; sporting and cultural activities.
- Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
- Services for providing food and drink; temporary accommodation.
- Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
- Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.