Trade marks for SMEs and Startups

If you own a small business or start-up, you will most likely develop a logo, tagline or symbol to build a unique brand for the marketplace.

Customers recognise you because of your branding, and when they see your logo, they know they will receive quality goods or services they can trust.

It’s important to protect your brand from competitors who may seek to imitate it. Commercial lawyers can help SMEs and startups obtain a trade mark registration in order to protect their brand.

This blog will set out what a trade mark is, benefits of registering a trade mark and the process for registering a trade mark in Australia.

What is a trade mark?

A trade mark allows small business owners and startups to distinguish your unique goods or services from those of competitors.  A trade mark can be an effective marketing tool. Some examples include the Nike ‘swoosh’ symbol and Royal Dutch Shell’s red and orange scallop shell, as well as household names such as ‘Coca-Cola’.

A trade mark is not the same as a business name. Business names are registered with the ASIC whereas trade marks are registered with IP Australia. A business name is used to identify your businesses to your customers and other businesses, while a trade mark identifies the goods and/or services you provide.

Why should I register a trade mark?

A registered trade mark grants you with exclusive rights to use, license and sell the trade mark. This means that when your competitor attempts to use an identical or similar mark, you will be able to claim infringement by pointing to your registration as proof of your exclusive rights. On the flip side, a registered trade mark can also act as a defence against someone asserting that you are infringing their trade mark.

The best course is to ask your lawyer to assist you in registering your trade mark. However, a business may have a trade mark without formally registering it. An unregistered trade mark may exist when you have been using a certain mark to identify your goods and/or services for a long time and have a built a reputation in it. However, if you want to allege unauthorised use of an unregistered trade mark, you will need to first establish that this unregistered trade mark exists. Therefore, it will be more difficult to prevent another business from copying your trade mark.

Who can apply for a trade mark?

Under the Trade Marks Act 1995 (Cth), any ‘person’ may apply for a trade mark registration in respect of goods or services if the person claims to be the owner of the trade mark and they are using or intending to use that trade mark, authorised or intends to authorise another person to use the trade mark or intends to assign the trade mark to a body corporate.

What can I register as a trade mark?

A single letter, number, word, phrase, sound, smell, picture, shape, or a combination of these can be registered as a trade mark.

However, the registration of certain signs may be more difficult than others. For example, single colour trade marks may require extensive evidence of use to be registered. That is, you must demonstrate that consumers have come to associate the particular colour exclusively with your specific goods and/or services. For example, Cadbury was able to use a particular shade of purple as a trade mark as they had been using the colour for its chocolates since 1990s. 

How do I apply for a registered trade mark?

A trade mark can be registered with IP Australia in two ways: through a standard application process or through TM Headstart. TM Headstart evaluates your trade mark application and assists you in identifying any issues prior to filing an application. While it is more expensive, TM Headstart can save you money in the long run by detecting issues early on. This reduces the likelihood of your application being rejected and saves you from paying re-filing fees.  

Examination of trade marks

Once you file a trade mark application to IP Australia, the trade mark examiner will assess the application and issue an examination report. If the application fails to meet the statutory requirements under the Trade Marks Act 1995, an adverse examination report will be issued. You may provide evidence to support your application within 15 months, or you may choose to amend the application.

Rejection of trade mark applications

A trade mark application may be rejected on a number of grounds. Most commonly, an application may be rejected where the trade mark is not capable of distinguishing the applicant’s goods and/or services from the goods and/or services of other persons. For example, the use of the word APPLE as a trade mark in relation to the sale of apples is incapable of distinguishing your goods. This is because other apple traders would also need to use that word. However, if your trade mark is the word APPLE and you sell phones, there is no legitimate need for other phone traders to use that mark, and therefore it is capable of distinguishing your phones from those of other businesses. Another common ground of rejection is where your trade mark is identical or closely resemble a mark which has already been filed for the same or related types of goods or services.

Application outcome

If your trade mark application meets all requirements, it will be advertised in the Australian Official Journal of Trade Marks for a 2-month period. During this period, third parties may oppose your registration on largely the same grounds for rejecting an application during examination. If no one objects, the trade mark will be registered, and you will be notified in writing.

How long will my trade mark registration last?

Your trade mark registration will generally be valid for 10 years from its filing date.

You can renew your trade mark registration 12 months before your renewal is due, or up to six months after. If you renew after the due date, you will have to pay additional costs.

The Trade Mark Office will send you a renewal reminder, so it is important to notify them in writing if your address changes.

The above article was written by Pippin Barry (BA, JD - 2012, The University of Melbourne), an Australian Legal Practitioner, and Hyein Kim, paralegal.