Trade Marks Law
What is a Trade Mark?
Trade marks are distinctive signs, such as, a logo that help consumers identify particular brands, products and services. A unique trade mark assists with building business reputation and setting the business apart from its competition.
A trade mark is a way of identifying a particular good, service or business. When one talks about a “brand” this is typically a reference to a trade mark.
Trade marks can consist of: letters, words, phrases, numbers, symbols, logos, pictures, sounds, distinctive shape (among others). They help to identify and distinguish the goods or services provided by one person from those of another.
As branding is a key aspect particularly in business, it is vital that steps are taken to protect against exploitation of your intellectual property rights by unauthorised third parties.
According to IP Australia's Intellectual Property Reports:
. 75,635 trade mark applications were filed in Australia in 2019; and
. in 2020, this figure was 81,701; and
. in 2021, the total trade mark applications filed in Australia had increased to 88,725.
This demonstrates that trade marks remain an important avenue for protection of IP rights.
Benefits of Registering a Trade Mark
By registering a trade mark:
. you gain exclusive proprietary rights in the mark
. you are able to prevent the registration by someone else of an identical or deceptively similar mark
. it helps others to identify your mark in searches so they know in advance that your mark is registered and that you have exclusive rights to the mark
. the IP right adds value to your business, especially where the brand generates goodwill
. it gives you the ability to licence or franchise your rights in the mark in return for a fee
. it places you in a stronger position to defend against any infringement against your mark
In order to be registered in Australia, the mark must meet certain requirements as set out in the Trade Marks Act 1995 (Cth).
Once registered, the trademark owner can use the ® symbol beside the trademark protected word or logo.
A trademark is usually registered for 10 years. After which the trademark can be re-registered for further periods of 10 years each.
Trade mark registration in Australia does not automatically provide IP protection overseas. Business owner's looking to promote their business, goods or services overseas will need to register trade marks in those countries where they wish to trade.
What We Do
Greyson Legal | Trade Mark Lawyers understand trade mark law. Our trade mark legal services include:
trade mark clearance searching
trade mark applications
replying to IP Australia Adverse Reports
trade mark oppositions
trade mark enforcement
trade mark infringement advice
trade mark licensing
trade mark assignments | transfers
trade mark monitoring
trade mark advice
Australian trade marks
international trade marks
Trade Mark Registration (Australia)
We assist with all stages of the trade mark registration process, namely:
lodging trade mark applications
informing you that a trade mark notice of filing acknowledgment has issued
advising you about the trade mark examination process
advising if the trade mark application has been accepted
assisting you with an adverse examination report (if any)
guiding you with trade mark oppositions (if any)
amending trade mark applications (if required)
confirming registration of the trade mark
Trade Mark Clearance Search
It is highly recommended that before applying for a trade mark - a detailed search should be carried out to check there are no similar trade marks already registered or pending registration.
When engaging Greyson Legal | Trade Mark Lawyers we undertake preliminary trade mark clearance searches to ensure you do not inadvertently infringe another person's trade mark
Trade Mark Assignment
Assigning a trade mark may arise where:
one party (Assignor) is transferring their IP rights in a trade mark to another person (Assignee). For example, a third party creating a trade mark and then selling that mark to another entity
a Business is being sold and the trade mark forming part of that Business's brand is also being assigned to the buyer
In these situations you may need a Trade Mark Assignment Agreement or specific clauses in the Business Sale contract to deal with trade mark assignment.
Trade Mark Licensing
A Trade Mark Licence is a right granted by one person (the Licensor) in favour of another person (a Licensee), allowing the Licensee to do certain things. For example, it could be to:
use the Licensor’s trade mark associated with a brand, such as, a franchisee being granted a licence to use the franchisor's logo
sell the Licensor’s product within a certain territory
distribute the Licensor’s products (eg. ABC Widgets) in say Queensland through a Distribution Agreement.
Greyson Legal | IP Lawyers are familiar with reviewing, advising and preparing Trade Mark Licence Agreements.
Trade Mark Enforcement and Infringement
A registered owner of a trade mark has the exclusive rights:
. to use the trade mark and to licence those rights to others; and
. seek relief under the Trade Marks Act 1995 if the trade mark has been infringed.
International Trade Marks
The grant of trade mark registration in Australia does not automatically protect your trade mark internationally.
Trade marks are enforceable in the jurisdiction where protection has been applied for, granted and current.
There are two options for international trade mark fling:
file an application directly in each country you require trade mark protection; or
if the country you require protection is a party to the Madrid Protocol, file a single application through IP Australia nominating those Madrid Protocol countries in which protection is required.
We have assisted clients to register trademarks in a number of countries outside Australia, including through the:
Trade Marks Registry, India;
Intellectual Property Office of Singapore;
New Zealand Intellectual Property Office;
and providing international trade mark advice in regards to the process to apply in respect of the USA and Canada.
A few trademarks we have assisted our clients to apply and register
Looking to register a trade mark ? Contact Greyson Legal | IP Lawyers
CorpMem Image Mark TM 2135821
Computer Records Management