Outline of Trademark Protection Benefits and Process following IP Australia change in Fee Regime

Is your brand name / trademark / logo adequately protected?

You have probably been using one or more brand names trademarks and or logos “YOUR TRADEMARK/LOGO“ for your business for some time, possible without having given it much thought, because you were concentrating on running the business.

Registration of YOUR TRADEMARK/LOGO as a trademark is a very good means of protecting your business. If you ever have a need to enforce your rights or defend your right to use YOUR TRADEMARK/LOGO, having YOUR TRADEMARK/LOGO registered as a trademark is a great help because it gives statutory enforcement rights, rather than have to rely on clumsy and more expensive common law and other methods.

Aside from the actual artwork, the main component parts of the proposed mark are any words used.

Where the words used are common they are less likely to be acceptable to IP Australia from a distinctiveness point of view because the view of IP Australia is that it will not allow trademark registration to appropriate to a particular individual or business common English words or acronyms.

So the logo or artwork is very important to the issue of distinctiveness.

“Augmented Lawyers For Augmented Reality“ (a trademark I own and use) would probably not have been registrable merely as words. However, when stylized a bit (fairly simplistically) as seen here, it became registerable and I use it in respect of IT / IP work.

As to costs on Australian trade mark registration, it depends greatly on the nature of the mark sought to be lodged and the number of classes in which registered protection is sought. For a straightforward mark for one class IP Australia registration fees can be as little as AU$330 (GST free) and legal fees can be from $800 (+GST).

Procedure Outline

1. A search as to availability of YOUR TRADEMARK/LOGO If the wording you use is merely descriptive or not distinctive (as is often the case), registration is less likely to be granted without apt and adequate distinguishing artwork;
2. A decision on how many classes of protection are claimed. There are 44 different categories of goods and services. So I would normally need a good outline as to the nature of your operations before I make a recommendation to you for consideration as to which class or classes in which you might register.
3. An application for a registered trademark, if it already includes artwork/logo is much less problematic, as a distinctive logo is easier. Simple words, particularly words commonly used in the English language, can fails as not being distinctive.
4. Artwork has to be in a particular IP Australia approved file format as to size and the like.
5. After application IP Australia looks at the application and, if it thinks fit, issues requisitions relating to any problems it sees. As a guide, you should assume that actual IP Australia lodgment and registration fees work upon the basis of $330 per Mark per class when using the online lodgement Headstart system.
6. Satisfaction of any requisitions raised by IP Australia;
7. Later, if IP Australia is otherwise satisfied, it will allow an application to proceed into the process. Thereafter it would be advertised and any member of the public (including your market competitors) would be able to lodge an opposition to registration. Though Opposition is common on less than 5% of applications;
8. If any opposition is lodged, it would be referred to you for response.
9. If not, the application should proceed to registration.
10. Trademark registration is unfortunately rather slow. Even a vanilla application, with no problems will take a minimum of 8 to 10 months but you can, of course, usually use ”YOUR TRADEMARK/LOGO“ before then.

Unusual or In a Hurry

Commonly, where there is any doubt or anything unusual, to minimize costs, save time and maximize certainty, I lodge what is called a ”Headstart” application with an initial fee to IP Australia of $200 per Mark per class.

Under this process, and application is lodged and IP Australia will come back within a week with any concerns it has in respect of the application as initially lodged. If it has any problems with the application, it will mention them and one has a few days within which one can to remedy the concerns raised by IP Australia.

Examples I can give you of issues raised by IP Australia in connection with the Headstart applications include requiring the consent of some existing registered trademark owner and wanting artwork to make the application distinctive (for example, where a client insisted on an application using common words only, the application was rejected by IP Australia and the client was required to add artwork [which carried an additional artwork lodgement fee], before the application was submitted to the second stage of the application process which is payment of the balance of the Headstart application fee of $130 per Mark per class.

Even when IP Australia admits an application to the process by way of Headstart application, IP Australia reserves the right to reject the application on any ground, though I have rarely had any later change of view by IP Australia.

Notwithstanding this, Headstart is a useful mechanism for flushing out any initial concerns IP Australia is likely to make in respect of an application.

An application can also be made for a slightly lower IP Australia lodgment fee without a Headstart Application, but one then waits months for even a clue of IP Australia’s view of the application.

Successful trademark registration provides protection to the extent that the relevant goods/services are used consistently with the class claim in respect of which the application is made.

If the mark is registered but not used in respect of the relevant goods or services there is potential for the mark to be struck down by other parties later on.

I can send fee schedule dealing with both IP Australia Fees and my fees, on request.

If you have any queries or wish to discuss any of the above, please contact me through the website or by email info@gregdross.com.au or ross@eakin.com.au or call me 0413 544 106.

Greg Ross