The process for adopting a new brand will depend upon the how and where you plan to conduct your business. The following comments relate to the steps that should be taken to ensure that all of the ‘legal’ boxes are ticked.
It is extremely important that you do not adopt and use a trade mark that is the same as or very similar to the trade mark of another business (especially if that business operates in the same general field of activity). Infringing the trade mark rights of someone else would get your business off to a very unfortunate and costly start.
Trade mark searches should always be conducted before adopting a new trade mark to ensure that you avoid infringing another persons’ rights. There are different types of searches that need to be considered and Brand Haven can provide advice and direction in relation to these.
If the trade mark is to be used in multiple countries, searches should be done in each of the countries of interest. When operating in several countries, it is generally desirable to be able to use the same trade mark in each country. So, before launching a new trade mark, searches should be conducted in each of the countries of interest.
If the search results are favourable, the trade mark can then be used and an application can be made to register the trade mark (in Australia and, perhaps, elsewhere).
Registration of Trade Mark
Trade mark registration is not mandatory but it does provide valuable legal protection for your brand and other benefits (see Benefits of Trade Mark Registration).
When adopting a new trade mark in Australia, it may be necessary to register the trade mark as a business name. A business name registration is essential when a person (or company) is trading under a name which is different from their own name. Further information on this is provided at Business Name or Trade Mark.
The typical steps and time frames for the trade mark registration process in Australia can be summarised as follows:
- Filing – The trade mark application is filed.
- Examination – IP Australia examines the application (about 4 months after the filing date*) and it will either accept the trade mark or issue an Examination Report (setting out any objections to the registrability of the mark).
- Response – If an Examination Report issues, you will have 15 months to overcome the objections – by filing written submissions, amendments and/or evidence.
- Acceptance – After a trade mark application is accepted, it is published for opposition purposes. Publication will occur no earlier than 5 months from the filing date. The opposition period is 2 months during which any concerned persons can oppose the registration of the trade mark.
- Registration – After expiry of the opposition period (and provided no opposition is filed), the trade mark will proceed to registration and IP Australia will issue a Certificate of Registration. The registration term is 10 years and registration is renewable for further 10 year periods.
In Foreign Countries
The procedures for registering trade marks in foreign countries are generally very similar to the procedure in Australia.
However, there are different ways of seeking registration of a trade mark in foreign countries and these are explained further under Brand Passport®.
If a foreign trade mark application is filed within 6 months of an Australian trade mark application for the same mark, the foreign application can generally claim the benefit of the earlier filing date. This can be very helpful as it means that the filing date of a foreign application can effectively be back-dated by up to 6 months (and take priority over any conflicting application of another person filed in the intervening period).
The typical steps and time frames for the trade mark registration process in foreign countries can be summarised as follows:
- Filing – The trade mark application is filed.
- Examination – The Trade Marks Office of the foreign country will examine the application for registrability purposes and it will either accept the trade mark or issue an adverse report (setting out any objections to the registrability of the mark). The time frame for examination to occur varies widely between countries.
- Response – If an adverse report issues, you will have a certain period within which to respond to the objections – by filing written submissions, amendments and/or evidence. The response period varies significantly between countries.
- Acceptance – After a trade mark application is accepted, it is published for opposition purposes. The opposition period varies between countries but it is generally between 1 month and 3 months.
- Registration – After expiry of the opposition period (and provided no opposition is filed), the trade mark will proceed to registration and a Certificate of Registration will issue. The registration term is 10 years and registration is renewable for further 10 year periods.