A trade mark does not need to be registered in order to create rights under common law. However, registration can significantly improve the certainty of ownership and legal rights in a trade mark and provide certain other benefits including that you are granted a monopoly right to the use of the trade mark for the goods and services it is registered in respect of, for a (renewable) period of 10 years within Australia.
Should I register a word trade mark or my logo?
There is a difference in protection in obtaining a word trade mark compared to a logo trade mark.
A word trade mark provides the owner with the monopoly right in Australia to use that trade mark (in relation to the goods and services it is registered in respect of) in any font or style. You are not limited to using it only in the current font or style you are using and other traders are prevented at law from using that word/phrase as a trade mark in relation to similar goods or services.
If you are located overseas and you are relying on an Australian trade mark to satisfy the “Australian presence test” for a .com.au or a .net.au domain name, then you will need a registered word trade mark that is an exact match to the words of that domain name.
If you have a logo version of your trade mark registered, then your protection under trade mark law is limited to using that particular logo version of the trade mark as applied for, and other traders are prevented at law from only using a trade mark that looks similar to that logo version, in relation to similar goods or services. A logo trade mark provides useful protection where your logo is highly distinctive and other traders imitate the ‘look’ of the logo, but not the actual words.
You should also think about how your customers are engaging with you. If you have an app, then you should consider applying for a logo application for your app version of your trade mark.
Do I need to engage a Trade Mark Attorney?
Anyone can apply for a trade mark in Australia, however, because of the nature of the exclusive rights granted by registration, applications are thoroughly examined by IP Australia.
It is common for someone to self-file an application, then receive an adverse examination report from IP Australia, and subsequently needing help from an IP professional torespond to that adverse report. The time involved in negotiating with IP Australia can be lengthy and expensive.
Whilst we cannot guarantee that your trade mark will obtain registration if you engage a Trade Mark Attorney to assist you with filing your trade mark application, based on our experience and knowledge of the Australian trade mark system and the law, we are well-placed to provide you with reasoned and practical advice at the application stage. Please complete and submit our Trade Mark Questionnaire for an obligation-free initial assessment.
