Trade Marks

WHY REGISTER A TRADE MARK?

A brand is a significant asset of any business and its value grows as the business grows.

A registered business name is a legal requirement to trade but confers no proprietary rights or protection for the brand or trading name. In effect you CANNOT stop someone else from trading under a name that is identical or very similar to your business name, simply because you have a registered business name.

Even the smallest business owns a motor vehicle and pays annual registration fees for that vehicle. A registered trade mark does confer proprietary rights and allows the proprietor to cost effectively prevent others from using the same or a similar mark or brand. The total costs for registration and maintenance of a trade mark are comparable to or less than the costs of registering a motor vehicle.

A trade mark is a sign used to distinguish the goods or services of one trader from those not produced by that trader. The application of a trade mark to goods or services adds to their value. A trade mark can be in the form of a word, phrase, letter, number, sound, scent, logo, picture, symbol, shape, colour or aspect of packaging or any combination of these.

The protection afforded to a registered trade mark is confined to the goods and/or services for which it is registered or similar goods and/or services. The description of those goods and/or services, at the time of application, is therefore a critical aspect of the application process and part of the service provided by Lord Commercial Lawyers. The goods and/or services are classified by reference to 45 classes under an international convention, the Nice Agreement. The registration fees and our professional fees are determined by the number of classes applicable to the goods and/or services selected. In most cases between one and three classes are sufficient to provide the necessary protection for a trade mark.

WHY USE US?

We are experts in trade mark law and are committed to providing one on one personalised client communication and service.

Lord Commercial Lawyers provide trade mark registration services on a fixed fee basis. Our Australian Trade Mark Guide explains in simple terms the requirements and procedures for the registration of trade marks in Australia. Our Schedule of Fees sets out the fixed fees for almost all of the steps that could arise in a trade mark registration, opposition or cancellation action.

In summary Lord Commercial Lawyers can offer their professional services to register one trade mark in one class for a fixed fee of $1,300 inclusive of all official fees and GST. This is the total cost for registration and maintenance of a trade mark for 10 years – $130 per annum. The trade mark registration can be renewed every 10 years indefinitely.

AUSTRALIAN TRADE MARK APPLICATIONS

IP Australia maintains a database of all registered trade marks and most applications for registration. Lord Commercial Lawyers can search this database as a first step in determining whether or not your proposed trade mark is registrable or if it might be refused on the basis of it being identical or confusingly similar to an existing registration or application.

Our Australian Trade Mark Guide provides a more comprehensive explanation of the considerations in selecting a trade mark, the relevant goods and services and the application process.

Upon registration the trade mark is protected for 10 years from the date of application and can be renewed indefinitely for ten year periods. A trade mark is registered throughout Australia.

MADRID TRADE MARK APPLICATIONS

Pursuant to international conventions, the Madrid Agreement or the Madrid Protocol, member countries have agreed to accept applications for registration of trade marks in their territory by the lodgement of a single application in the trade mark owner’s home country. This type of trade mark application is referred to as a Madrid Application.

A Madrid Application in Australia is made by the trade mark owner filing an application with IP Australia for registration in Australia and nominating from one to 135 other countries. The trade mark application is then examined and processed in the relevant trade mark office of each nominated country. Some countries may accept and some may reject the trade mark based on local laws and prior similar trade marks. A separate fee is payable for each nominated country however, the total cost is significantly less than if a separate trade mark application was filed in each country.

Lord Commercial Lawyers can provide its services for a Madrid Application on a quoted fixed fee basis once the desired countries have been decided upon in consultation with the trade mark owner.

INTERNATIONAL TRADE MARK APPLICATIONS

As an alternative to a Madrid Application, or in the event the desired country is not a signatory to the international conventions (eg: India), Lord Commercial Lawyers can assist you in filing your trade mark application directly in that country. Many countries offer an electronic filing service such that there is no need to appoint a local trade mark agent.

A client with a need for trade mark registration in overseas jurisdictions is advised to consult with Lord Commercial Lawyers to determine the most economical and practical approach – a Madrid Application or direct filing in the relevant countries. Many foreign countries also allow their trade mark databases to be searched online and Lord Commercial Lawyers can conduct preliminary searches to ascertain the registrability of proposed trade marks in those countries.

For more information contact Andrew Lord at andrew.lord@lordlaw.com.au or on (03) 9600 0162.