by Dr P Bernard Carey - Special Counsel / Director
One of the defining differences between a developed and a developing country is the level of recognition given to intellectual property (IP). Such things as trade marks, copyrights, patents, designs, and plant breeder’s rights (there are others) make up the IP legal domain. The one of these most frequently advised upon by Champion Legal is trade marks.
Trade Marks:
According to Jill McKeough et al in their superb book “Intellectual Property in Australia”, trade marks “are signs (including devices, labels, names, etc) which indicate that goods or services originate from a particular trader.” (page 9). The governing legislation is the Trade Marks Act 1995 (Cth). This Act allows registration, and gives protection against unregistered marks which are “substantially identical or deceptively similar.”
Registration:
The process for registering a mark in Australia is to make application to IP Australia (IPA) with application fee detailing the mark in words and artwork and the class you wish to register your mark. There are over 40 choices of class.
IPA do their assessment to see if anyone or any company has beaten you to the punch which does happen often. If not, your mark will pass the examination phase and will be advertised in IPA’s gazette for three months in case there are any objections lurking in the community. If clear, the mark will be registered on payment of the registration fee.
If the examination phase reveals other owners of the words (usually the problem) or artwork design, difficulties and expense can begin. It could be that the words (eg McDonalds) are registered, but if your McDonalds is a cleaning firm or an overnight delivery company, then it is highly unlikely that you would be seeking to register in the class covering food production. So, as long as your artwork is nothing like the golden arches, IPA may allow registration. But you will have to convince IPA.
If you want to register a mark which is already registered in the same class or classes that you seek your chances nose dive, but it is still not impossible. You may be able to modify the classes you want and if you do have differentiating factors, your lawyers may be able to extract a consent agreement from the mark holder to let your mark co exist so both of you have a mark in the marketplace. Champion arranged one of these for a multinational company recently. It was a long but fruitful process.
International Trade Marks:
If you have successfully registered your mark with IPA, you might decide that you wish to market offshore. Your mark can be protected in selected countries through the World Intellectual Property Organisation (WIPO). An application, including a fee, is made through the IPA. The size of fee is based on the number of classes and number of countries applied for and will be measured in thousands of dollars. The European and most other registrations are usually straightforward and it is only a matter of paying and waiting before your registration certificates arrive from WIPO. However, any application to the USA involves the higher level tests imposed by the US trade mark attorneys who examine your application for the authorities. Some of their objections relate to fine details, but they must be overcome to gain registration.
Your trade mark, representing in most cases your brand, is valuable. If you have a business which you wish to promote with your own mark and, at the same time you wish to warn off imitators or companies that want to piggy-back on your success, register a trade mark. Champion Legal can help.
