We act for clients across Australia and overseas in relation to all legal aspects of brand protection and commercialisation.
Our services include:
- Advising on the adoption of new brands, including arranging and advising on clearance searching;
- Registration/brand protection;
- Enforcement of registered trade marks;
- Enforcement of common law trade marks through passing off/misleading and deceptive conduct actions;
- Oppositions;
- International trade mark applications;
- Licensing;
- Assignments; and
- Disputes.
The Trade Marks Act 1995 provides for a system of registration where you, as the trade mark owner, may obtain 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. Trade mark 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 still infringe someone else’s rights.
Without a registered trade mark, 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 – this can be difficult. Proving your reputation in Court can be complex and expensive. A trade mark registration creates a presumption that you own the rights in that trade mark.
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. A big problem can arise when you find out that 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 proceedings force you to rebrand.
Clearance searching and trade mark registration should be taken very seriously and ideally, before you implement branding and commence trading.
Clearance searches
Before proceeding to use a new logo/brand we recommend searches are conducted 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 and/or logo as a trade mark. 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 needs to include not only the trade mark register but public domain searching.
Our clearance searches are conducted on a fixed fee basis. Clearance searching can be an expense people are reluctant to incur, however it is much cheaper than defending infringement action or rebranding.
Trade Mark Application process
In order to obtain a trade mark registration an application is lodged with the Trade Marks Office at IP Australia for the mark 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 mark for registration or advise of issues in relation to the application that would need to be overcome before the mark could be accepted for registration. Sometimes these issues are administrative, other times they are more substantial such as a concern that the mark is too descriptive or the existence of prior marks that are considered too similar to that in the application.
If a clear report is issued, the mark is then advertised as accepted. Other parties have 2 months in which to lodge objections to the registration. If after 2 months no objections are lodged, the application is clear to be registered. The mark will then 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 trade mark. This work is provided on an hourly rate basis.
International applications
Rouse Lawyers can assist you in relation to protection of your trade mark overseas through international applications (Madrid Protocol). We also use a network of overseas agents to apply for trade marks directly in many foreign jurisdictions.
Contact us with any assistance you may require in this regard.
