Trademark FAQ

A registered trademark is not the only means of protecting a brand, operating alongside consumer law (misleading and deceptive conduct) and common law (passing off).

However, a registered trademark affords a relatively simpler means for establishing infringement, and therefore enforcement.

We strongly recommend obtaining registered trademarks for all important brands within your business.

A trademark application goes through stages of filing, examination, amendment to overcome objections (if required), acceptance and registration. Between acceptance and registration there is an period in which third parties can object to the registration of the trademark.

Within six months of filing a first trademark application, further foreign trademark applications can be filed while claiming priority from the filing date of the first application.

In situations where any objection raised can be easily overcome, and no third party opposition is filed, the trademark will typically be registered in about 7-months on filing.

The Headstart application is a prefiling service offered by IP Australia, whereby an application can be filed and a preliminary report on registrability is obtained within five business days.

It must be noted that a Headstart application does not provide a priority date.

Trademarks types typically fall into the following categories:

• ‘Plain text’ trade mark refers to a mark in ordinary typescript or basic cursive handwriting.
• ‘Fancy’ trade mark refers to a highly-stylised mark.
• ‘Sound’ trade mark is represented by a precise description of the sound, typically including musical notation.
• ‘Scent’ trade mark is represented by a precise verbal description of the scent.
• ‘Shape’ trade mark is represented by a three-dimensional depiction.
• ‘Collective’ trade mark is a mark used or intended to be used by members of an association.

There are only very limited options for amending a trademark after filing and publication.

It is important that applications are filed for the correct mark, while specifying the complete scope of relevant goods and services. In some cases, correction of defects requires refiling of the application.

In short, yes. A request must be filed, which typically include relevant supporting documents such as an assignment deed or an company change of name certificate.

A trademark application must specify the goods on which the mark will be applied, and/or the services for which the mark will be used. These goods and services are classified into 45 distinct “Nice classes”, which must be addressed when preparing any new trademark application.

IP Australia offers a pick list of goods and services that can be searched. However, where the pick list does not adequately specify the scope of intended use, a free-form description of goods and services can be used (but still must conform to the Nice classification).

As amendments to the application are limited, it is essential that the specification of goods and services are appropriately considered at the time of filing.

This is a very difficult question to answer, and is very much dependent on the particulars of the mark and specified goods or services.

Further information is available on the trademark cost page.

In Australia, not usually, unless registered with explicit limitations as to colour. Unless otherwise specified, trademarks are registered in respect of all colours whether or not the application was in colour.

Trademark applications are commonly filed in black and white, greyscale or colour.

Registerability of surnames typically depends on how common the surname is.

Registrability of geographical names is typically only restricted where the name of a place or region has a reputation for the specified goods or services.

A cease and desist letter may be either a nuisance, a serious threat to your business, or something in between.

Where a comparison of your product and the trademark that has allegedly been infringed reveals no legal liability on your part, it is important to respond to the sender with a clear explanation of why their letter has been sent in error.

Even if there is potential infringement, it is important to fully evaluate your options up front in order to minimize the cost and reach a resolution as quickly as possible.

Patentable can help evaluate your best course of action, and offers a free no-obligation initial consultation.