We act for clients across Australia and overseas in relation to all legal aspects of brand protection and commercialisation.
Our trademark services include:
- Advising on the adoption of new brands, including arranging and advising on clearance searching;
- Registration and brand protection;
- Enforcement of registered trademarks;
- Enforcement of common law trademarks against passing off, misleading and deceptive conduct actions;
- Trademark oppositions;
- International trademark applications;
- Licensing;
- Assignments; and
- Trademark disputes.
The Trade Marks Act 1995 provides for a system of registration where you, as the trademark owner, may acquire Australia-wide, exclusive rights to your brand.
The registration of business names, company names or domain names does not guarantee the security of your brand.
While all of these registrations are important and often required, they do not give you any ownership rights in the name. Trademark registration is the only way to secure proprietary rights in the brand.
In fact even if you have a business name, domain name or company name registration, use of these can infringe someone else’s rights.
Without a registered trademark, in order to prevent someone using your brand, you must establish your business’s reputation in the region in which it is being used improperly – and this can be difficult. Proving your reputation in Court can be complex and expensive. A trademark registration creates a presumption that you own the rights in that trademark.
Often people starting a new business adopt a name and logo and then go about spending substantial funds on marketing materials, building a website and developing goodwill. And then one day you find out the name or logo you have been using infringes another person’s intellectual property rights. In many cases the time and money spent promoting your brand can be wasted as the threat of legal action force you to re-brand your business.
Clearance searching and trademark registration should be taken very seriously — ideally, before you develop branding and start trading.
Trademark Clearance Searches
Before going ahead with a new logo or brand, we recommend to do a trademark search to ensure there isn’t anyone else already using a brand or logo that is the same as or similar to your proposed branding in relation to the same or similar goods. This reduces the risk of launching the new brand and that launch being stopped by someone claiming prior rights to a similar brand.
The searches also consider possible impediments to registration of the brand or logo as a trademark. Where you want to do some due diligence but need to consider where money is best spent, we can discuss that with you.
In Australia, people can develop rights in a brand through use of the brand even without a trade mark registration. Any clearance searching therefore has to include not only the trademark registration but public domain searching as well.
We do our clearance searches on a fixed fee basis.
Clearance searching can be an expense people are reluctant to spend, however it is much cheaper than defending infringement action or re-branding.
Trademark Application Process
To register a trademark, an application has to be lodged with the Trade Marks Office at IP Australia for the trademark in one or more relevant classes.
There are currently 45 classes covering various goods and services. Rouse Lawyers will identify relevant goods and services classes in order of importance to your business. We can then prepare applications including descriptions of the goods or services in each relevant class. Once approved by you, the application is lodged.
The application is then examined and a report issued. The report will either accept the trademark for registration or advise of issues in relation to the application that would need to be overcome before the trademark could be accepted for registration.
Sometimes these issues are administrative, other times they are more substantial such as a concern that the trademark is too descriptive or the existence of prior trademarks that are considered too similar to that in the application.
If a clear report is issued, the trademark is then advertised as accepted.
Other parties have two months to lodge objections to the registration. If after two months no objections are lodged, the application is clear to be registered. The trademark will be protected from the date of the original application.
Our trade mark application work is conducted on a fixed fee basis.
If there are objections to overcome, additional work will be involved. This can range from written submissions to statutory declarations providing evidence of use or intended use of the trademark. This work is provided on an hourly rate basis.
International Trademark Applications
Rouse Lawyers can assist you in relation to protection of your trademark overseas through international applications (Madrid Protocol). We also use a network of overseas agents to apply for trademarks directly in many foreign jurisdictions.
