Trade Marks
What is a trademark?
The Australian Trademarks Act defines a trademark as a sign used, or intended to be used to distinguish goods or services dealt with or provided in the course of trade from goods or services so dealt with or provided by another person.
A sign may include any one of the following or combinations of the following: any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape colour, sound or scent.
A sign may include any one of the following or combinations of the following: any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape colour, sound or scent.
What is the process for registering a trademark in Australia?
The first step in registering a trademark is the lodgement of an application at IP Australia. The Registrar of Trade Marks must examine the application and report whether there are grounds under the Trade Marks Act for rejecting the application. The Registrar must, after examination, accept the application if satisfied that the application has not been made in accordance with the Trademarks Act or there are grounds under the Trade Marks Act for rejecting it.
An application for registration of a trade mark must be rejected if:
Upon passing examination, acceptance of the application for registration is published whereafter third parties may oppose the registration. In the absence of any opposition a certificate of registration will be issued.
An application for registration of a trade mark must be rejected if:
- the trade mark contains or consists of certain proscribed signed, for example the words “patent” or “patented”;
- the trademark cannot be represented graphically;
- the trademark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons;
- the trademark contains or consists of scandalous matter or its use would be contrary to law;
- use of the trademark in respect of those particular goods or services would be likely to deceive or cause confusion;
- if the applicant’s trademark is substantially identical or deceptively similar to the trademark which has been prior registered or whose registration is earlier sought by another person where: the applicant’s application relates to goods, in respect of similar goods or closely related services; and where the applicant’s application relates to services, in respect of similar services or closely related goods.
Upon passing examination, acceptance of the application for registration is published whereafter third parties may oppose the registration. In the absence of any opposition a certificate of registration will be issued.
When is a trademark distinctive?
A key concept of trademark law is distinctiveness. The qualifying criterion is not whether the mark has acquired a distinctive character but whether the mark has the capacity to distinguish the applicant’s goods or services. The distinctiveness requirement of the Trademarks Act is met by establishing the trademark is inherently distinctive or by showing that it has an acquired or actual distinctiveness of a combination of both.
What is the term of a registered trademark?
A trademark registration can be renewed in perpetuity in 10 year intervals dating from the filing date of the trade mark application.
Where can one determine whether a particular trade mark has been registered in Australia?
Information on Australian registered trademarks and trademark applications can be located at IP Australia ATMOSS database:
http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start
http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start