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In Australia, there are two concurrent trade mark systems; one established through use, under common law, the other through registration under the Trade Marks Act 1995.

To secure registration in Australia, an application is filed for your trade mark in respect of your particular goods and/or services.  Your application is examined, in respect of the registrability of your mark and prior similar marks, together with other formalities.  Once the matters raised on examination are addressed, the accepted application is then advertised for a three month opposition period.  However, most marks are not opposed and are simply registered, after the expiry of the opposition period and upon payment of the registration fee.  Registered trade marks are then renewable every ten years. 

Your trade mark can also be registered overseas.  In fact, some countries do not have common law rights, as such.  Consequently, registration overseas is strongly advisable in such countries, where you are going to use your trade mark.  There are two systems for overseas registration; the first is filing an International Application under the Madrid Protocol and designating the countries you require protection for.  The other, is filing National applications in each country which you require protection in.  Most countries overseas have a similar registration process to us here, in Australia.  That is there is usually some form of examination, opposition period and then, registration.  There are many factors to consider with overseas protection, which will be the subject of another article or if you would like further information, please do not hesitate to email Kerry on knewcomb@bigpond.net.au .

What are the benefits?

• You as the owner of a registered trade mark have an exclusive right to use your registered trade mark, in connection with your registered goods and/or services throughout Australia.
• You as the owner of a registered trade mark have an exclusive right to allow others to use your registered trade mark, in connection with your registered goods and/or services throughout Australia.
• You as the owner of a registered trade mark have an exclusive right to prevent others from using your registered trade mark or a deceptively similar mark, in connection with your registered goods and/or services (or similar goods and/or services) throughout Australia.
• These rights are enforceable by merely establishing that you are the registered owner of the mark; it is not necessary to establish a reputation.
• This is in stark contrast to a common law action for passing off where reputation amongst a number of others elements are required to be proved.
• The filing of an application provides a filing date, which becomes the application date and blocks subsequent applications.
• Filing an application places competitors on notice of your claim to ownership and may act as a deterrent to your competitors using and registering the mark.
• A registered trade mark is often one of the most valuable assets of a business and can be included in a business valuation.
• Registration of trade marks are often a necessary requirement for franchising and licensing of a business.
• Registration is a defence against infringing other trade mark registrations.

© Kerry Newcomb 2007

For more detailed information about about Trade Mark Registration, contact:

KERRY NEWCOMB
Trade Mark Attorney
PO Box 254, Spring Hill, Brisbane QLD 4004
p: 07 3369 4020
f: 07 3367 8351
m: 0402 971 662
e: knewcomb@bigpond.net.au