Guest post by Anthony Lieu, Lawyer and Strategist at LegalVision
Whether you run an e-commerce marketplace or pure tech startup, every business creates intellectual property and has a brand to protect. A key part of protecting a business’ brand and goodwill is registering a trademark. From determining the trademark’s class to applying with IP Australia, the trademark registration process can be convoluted. This article sets out what you can trademark and the process that it entails in Australia.
A trademark applicant should take care to ensure they are making the correct application when lodging for a trademark. Trademarks exist within their own area of intellectual property, as distinguished from designs, patents, copyright and plant breeder’s rights. Within this area, trademarks are inclusive of letters, logos, words, phrases, numbers, shapes, phrases, packaging, sounds, smells, movements and pictures. Across all these different types, the good or services should be uniquely identifiable with the trademark and must be so in such as way that they can be linked to the business that provides those good or services.
- Classifying your Trademark
Once it has been determined whether or not you have a trademark, it must then be classified into one of the 45 goods and services classes listed by IP Australia. Misidentification of a product class means the trademark will not extend to cover the product.
To streamline this process, IP Australia has introduced the picklist to extensively outline 60,000 sub-sections of good and services with their corresponding class. This ensures that nearly any type of good or service may match or be reasonably similar enough to a picklist sub-category for it to grouped into a particular class.
When trying to determine the class, it is also helpful to frame the search with some background questions around what your business activities are, the nature of the product or services you provide and where income is derived from. The answers to these questions better ensure you can isolate the correct class and items within them.
However, if there is not a classification that adequately covers a product or service, applicants can also submit a custom description to detail the unique features of a good and service not covered by any of the picklist entries. If necessary, registration can be completed for more than one class if there is suitable overlap to do so. The caveat here is that it does reduce the chance of successful registration, having to satisfy the criteria of multiple classes. It can also present issues, if, for instance, the trademark falls into disuse and once of the class registrations lapses, leaving the product in limbo.
- Conducting a Trademark Search
The purpose of a trademark search is to eliminate the possibility that there already exists a near identical or duplicate trademark to the one for which registration is being sought. The official and most widely used way to carry out a trademark search is through the Australian Trademarks Online Search System (ATMOSS), which will reveal if trademarks are:
- Pending: still awaiting the decision of IP Australia
- Registered: approved by IP Australia
- Not-Registered: having not been registered before
- Refused: rejected on various grounds, namely it infringed on another trademark.
Images, words, prefixes and images are all searchable. ATMOSS also enables applicants to follow application process and to search for other trademark owners. Other than ATMOSS, database search options include Trademark Check, Classification Search and Trademarks Image Viewer.
- Registration Application and Outcome
Applicants are required when they are registering their trademark to provide their contact details, a representation of the trademark and description of the product/service being trademarked, the list of relevant classes the trademark falls under and the filing fee.
Once the trademark has officially been applied for, applicants then await the outcome, which can take up to four months depending on whether there are any issues with trademark examination. If there are problems with the application, they will be presented in the examiner's report, and the applicant will have the opportunity to rectify them and re-submit. If successful, the applicant will receive a notification of registration.
As trademark registration is a lengthy and complex process, making thorough checks at every step of trademark registration is crucial to prevent potentially expensive oversights. If you have any questions or are uncertain about along the way, it's advisable to consult with a specialist IP lawyer. LegalVision's IP team can assist on 1300 544 755.
Anthony is a lawyer and Strategist at LegalVision. He has a keen interest in startup law, IT law and scaling fast-growing businesses. He has a strong understanding in how startups operate at all stages and navigating the myriad of legal issues surrounding online businesses. He has worked in the public and private legal sector, specialising in disputes and litigation, corporate advisory and tax controversy.