Briefings

What a trade mark is

A trade mark is a sign placed on the goods sold by a business, or used in advertising to identify and distinguish the particular product or service provided. A trade mark can be a word, logo, shape, slogan, letters or numbers, colour, sound, scent, aspect of packaging or any other distinctive element. It is one of the key aspects of distinguishing your goods or services from those of your competitors.

Why it matters

A trade mark is a monopoly right with commercial value that can be bought, sold and licensed. Before adopting a trade mark you need to make sure that no-one else claims any rights in the same sign. If you fail to check, and somebody else claims rights for the mark, they may be able to stop you from using it, which could be disastrous for your business. If the search reveals that the mark is clear, you should apply to register it immediately, to prevent it being copied by others. Provided that the appropriate renewal fees are paid, a trade mark can last indefinitely.

What can be registered

A registered trade mark can be made up of one or more of any number of elements. To qualify for protection the mark must be distinctive or have become distinctive through use.

Descriptive words, like 'superior' or 'best' are not registrable. Common surnames, geographical names of places and words like 'Mister', 'Doctor' and 'Ultra' and marks with the prefix 'e' may only be registrable if you can show the mark has become distinctive through significant use. The more distinctive a mark, and the more carefully its specifications are drafted, the better the chances of obtaining a registration.

Why registration helps

Advantages of registration include:

· an exclusive right to use the mark in connection with the listed goods or services;
· the use of an Australian registration (with its wider than USA specifications for goods and services) as a basis to obtain registration internationally; and
· the ability to ask the Australian Customs Service to seize infringing foreign goods.

Registration of your mark makes it easier for you to stop imitations. A registered business name does not protect your mark from being registered as a trade mark by someone else which is the same as your business name. If you do not own a registered trade mark you will have to rely on laws of fair trading, trade practices or passing off which is more expensive and time consuming than a trade mark infringement action.

How nicholasweston can help

Nicholas Weston is a highly focused, Trade Marks Attorney firm. We have good relationships with IP Australia’s Trade Marks Office and with agents in most countries of the world. We provide a full range of professional trade marks advice and take a constructive, practical approach to surmounting the various obstacles that may be raised prior to a granting of registration.

We can advise you in relation to brand selection, availability searching, registration and general protection, such as: if somebody challenges your right to apply for or use a particular name, or if you think that others are using a trade mark which is rightfully yours. We act for large companies and small businesses, to whom we provide the following services:

Development and implementation of Australian and international, enterprise-wide corporate identity and branding strategies.

International reach, and a trade mark strategy informed by the laws, policies and cultures of the target countries you plan to enter.

Trade Mark protection at all stages of its life

Name and brand creation

Trade Mark maintenance, exploitation and licensing

Full advisory service on Australian and international strategies for searching and registering

Inter-company negotiations and mediation

All types of trade marks transactions, including assignments, licenses, security agreements and co-existence agreements

Full trade name audit

Due diligence

Policing and watching service

Comprehensive trade mark portfolio management and strategies

Trade mark litigation via Weston & Weston Lawyers.

How much it will cost

Search and registration fees vary from country to country, so this is our approach to fees:

Fixed fees
In relatively straightforward matters we agree fixed fees with clients. We aim for certainty and transparency and, to our knowledge, are the only Australian Firm to publish a very detailed Schedule of typical costs (which you will find here).

Time-based fees
When the time spent crucially depends on the particular nature of a case, for example in responding to an examiner's objections or advising on infringement issues, these fees may vary depending on the difficulty of the work involved and the seniority and experience of the fee-earner.

Disbursements
These usually represent official government fees or the fees of a foreign associate.

Estimating the costs
We can give you a clear and accurate written estimate of the costs you are likely to incur with full details of costs likely for particular territories.

We will agree a budget with you and provide ample notice of those dates when a decision which will incur costs must be taken.

Invoicing
In general, we will invoice you once the work has been done, subject to agreed credit limits. But in some cases - for example, involving sizeable disbursements - we may ask for money on account.

Registration fees provide protection for typically ten years. Renewal fees are usually significantly less than the original registration fees.

Your trade marks are one of your businesses' most valuable assets, and need protection as such.

We can help you achieve the protection that your business deserves