Australian trade marks

Trade mark registration in Australia gives you as the registered trade mark owner exclusive rights and the ability to trade knowing that you have a monopoly over that particular brand within your industry. This is on the provision that you use your trade mark in relation to the goods and services that you have sought protection in your trade mark application. Under the Trade Marks Act 1995 a trade mark can be any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

A registered trade mark is used to distinguish your goods and services from other traders and gives you the legal right to use, license or sell the trade mark within Australia for the goods and services for which it is protected.

At Contego Trade Mark Attorneys we specialise in assisting businesses of all sizes in establishing strong enforceable trade marks, which ultimately grow into valuable assets that can then be licensed, sold, assigned and more, making your business both more valuable and attractive to potential investors.

Trade Mark Searching

Contego Trade Mark Attorneys provide a professional trade mark searching service to ensure that your are well informed and know if your chosen trade mark is available for your use before committing to the expense of applying. We offer our clients three options of trade mark availability and regitrability searches which are available to suit your business’ needs.

  1. Basic trade mark search

The basic trade mark search report includes a search of the Australia Trade Marks Register to identify if your brand is available to use and register within Australia. The basic search report outlines conflicting trade marks which are already protected on the Australian Trade Mark Register and summarises  our recommendations for filing.

  1. Standard trade mark search

The standard trade mark search report includes a detailed search of the Australian Trade Marks Register, ASIC National Name Search, Australian Business Register and the Domain Name Register. The full search report outlines conflicting trade marks which are already protected on the Australian Trade Mark Register, business and company names which may be considered similar to your proposed trade mark and summarises our recommendations for filing.

  1. Advanced trade mark search

The advanced trade mark search report includes a detailed search of the Australian Trade Marks Register, ASIC National Name Search, Australian Business Register and the Domain Name Register. This search also identifies any existing common law trade marks which may be in use within Australia. Trade mark registration is not compulsory within Australia, so it is often important to search for common law use of a trade mark, as this will ultimately determine your position in the marketplace.

Trade Mark Application

Once you are ready to lodge your proposed trade mark with the Australian Trade Marks Office, our Attorneys will work with you to prepare and file your application ensuring that the best possible protection is in place for your brand. The Australian Trade Mark Office requires a number of criteria that must be fulfilled before they will accept a trade mark for registration. Contego Trade Mark Attorneys have the right skills and expertise to fully understand and comply with these requirements and ensure that each application proceeds without delay.

Trade Mark Expeditions

Once your trade mark is filed with the Australian Trade Marks Office it is generally examined within three to four months. However, under certain circumstances, Contego Trade Mark Attorneys can fast track the examination of your application reducing the time of the overall trade mark process.  

Trade Mark Examination

Your trade mark application is examined by a Trade Mark Examiner and for your proposed trade mark to be accepted, it must meet a number of established criteria as set out under the Trade Marks Act 1995. If the Examiner accepts the application, the trade mark is then advertised in the Official Trade Marks Online Journals and third parties are given a period of three months to oppose the registration of your trade mark, before it proceeds through to registration
If there are any problems with the proposed trade mark, the Trade Mark Office will provide a written report outlining the objections. These may be in relation to simple formalities,  conflicting trade marks, prohibited signs, or descriptive trade marks.  or that the trade mark is not capable of distinguishing.

It is a requirement under the Trade Marks Act 1995 that an application for a trade mark must be initially rejected if the proposed trade mark is substantially identical with or deceptively similar to a trade mark registered by another person for similar goods or services. When considering whether two trade marks are similar there are two elements that need to be considered. These being the nature of the trade mark and the type of goods or services for which registration is sought.
Contego Trade Mark Attorneys are experts at responding to these reports, and in instances where objections are raised by an Examiner, our Attorneys have a high success rate in overcoming such objections.  We are experienced in all facets of trade mark law and are confident we can secure full registration of your valuable brand in most instances.

Trade Mark Registration

Once the examination phase is complete and your application has been advertised in the Official Trade Marks Online Journals it will proceed through to registration. Official government registration fees are then payable to the Trade Marks Office and your Certificate of Registration will be issued, providing you with a registered trade mark of your number one asset.. your brand!!

International trade marks

If you are looking to expand you business outside Australia, before investing a significant amount of capital into international marketing campaigns, you will need to ensure your brand or product is available for registration as a trade mark thereby ensuring you are the sole owner of the brand in the given market. At Contego Trade Mark Attorneys we specialize in providing our clients with international trade mark searching and protection, via a network of highly skilled and experienced international associates and through the Madrid Protocol. Generally speaking a separate trade mark registration must be sought in each country of commercial interest.  There are, however, a few examples of registration systems which covers more than one country:

  • Benelux - comprises of Belgium, the Netherlands and Luxembourg. This system works on the concept of "territorial unity" - that is, the registration covers all three countries as if they were one, and it cannot be divided or split.
  • European Community Trade Mark (CTM) - A CTM covers all 27 countries of the European Union (and will automatically extend to any new countries which join that Union in the future.)  An application may be rejected if it is unregistrable in just one member state (e.g. if it is descriptive in French, the application will fail for the whole EU).  However, in such circumstances there is an opportunity to convert a CTM application to individual National applications.
  • United Arab Emirates - The UAE is a Federation of seven Gulf States including Abu-Dhabi, Dubai, Sharjah, Ras Al-Khaimah, Ajman, Fujairah and Umm Al-Quwain. 
  • O.A.P.I. - Organisation Africaine de la Propriete Intellectuelle, also known as the African Union, is a union of 14 former French colonies and a trade mark registration covers all 14 States.
  • "International" Registration under Madrid Agreement or Protocol - a growing number of countries are joining the Madrid system of central registration.  The systems, under both the Agreement and the Protocol, differ from the CTM in that while the application process is centralised, the examination and eventual issue of registration is done separately in each country nominated. The rights arise in each national jurisdiction.