We asked Brett Lewis of Davies Collison Cave a few questions on registering a Trade Mark.

Do you need a Trade Mark Registration?

A trade mark registration is very often a key business asset.  It turns an intangible property right into a tangible one, something that can be sold and licensed.

Registration typically provides exclusive rights and not only to the actual mark registered. The rights can be enforced against unauthorised users of that mark and deceptively similar marks.

In addition, a registration typically blocks others from registering the same or similar mark in relation to your product or service area and closely-related areas.  For example, registration of a mark for wines can block others from registering in relation to other alcoholic beverages and even non-alcoholic wines!

What Can Be Registered as a Trade Mark?

Almost anything that distinguishes your product or service from those of your competitors is a trade mark and almost anything can be registered.  This includes words, logos, product shapes, aspects of packaging, sounds and even scents.

The benefits of owning a trade mark registration, Why bother?

It’s all about acquiring and consolidating your rights, blocking others, giving you a competitive edge and creating a valuable property right.  A brand is a key business asset: a strong brand adds significantly to the value of the business it represents.

Is it expensive?

The costs will vary from case to case but are relatively small in the overall context of the business development costs, brand creation, product launch and ongoing marketing. Registrations run for renewable periods of 10 years so the annual cost is small

The Process

  • Searching
    Proper clearance searching is a highly skilled task and developing the correct search strategy to capture all relevant marks is key. There is no substitute for a professional search but a good starting point is the official database of trade marks.  Here’s a link:  http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start. Before you apply and even more importantly, before you make a commitment to a new mark invest in a full clearance search.
  • Registration/application
    Registration/application – The process is long: the delay between filing an application and obtaining a Certificate of Registration is at least 8 months but the rights are retrospective to the date on which the application was filed.

International Registration

National applications can be filed in almost every country. There are also regional registrations, like the Community Trade Mark for the EU and international registrations covering 90+ countries.  Choosing the right registration path at the outset is an important decision and should be left to a professional firm.

How Davies Collison Cave can help

Davies Collison Cave is a specialised Intellectual Property firm and is widely recognised locally and internationally as the leading IP firm in Australia.  It has offices in Melbourne, Sydney and Brisbane and strong relationships with corporate clients and other IP firms around the world. The firm specialises in acquisition and enforcement of trade mark rights and these notes were contributed by one of its partners, Brett Lewis: [email protected]