Freehills Patent & Trade Mark Attorneys
Frequently asked questions
Patents
Trade marks
Business names
Designs
Costs
Patents
What is a patent?
A patent is a legal document which confers on an inventor or a person claiming rights from the inventor a monopoly for a limited time to make, use, hire or sell an invention. In return for this monopoly, the inventor or applicant must disclose the invention to the public for the benefit of advancing technology. This is done by way of a patent specification which is a written description of the invention.
What can be patented?
Any new and inventive device, substance or process which is commercially useful can be patented. Examples include mechanical devices, electrical circuits, computer technology, business methods, advanced materials, chemical compounds, pharmaceuticals, micro organisms, plants, genetically altered non-human life-forms and processes for their manufacture.
Does my invention have to be new?
The invention must be new at the date of filing a patent application. This means that there should be no disclosure of the invention before a patent application is filed unless it is under an obligation of confidentiality. Disclosure may occur when there has been an oral presentation, printed publication, offer for sale or public use of the invention. Some countries, including Australia, have a grace period that may cover disclaimers made by an inventor. However, we do not recommend relying on the grace period as other jurisdictions, such as Europe, do not have comparable conditions.
Should I do a search of my invention?
A search can be conducted in order to check that an invention is new and/or does not conflict with or infringe any existing patent rights. Searching is generally recommended before substantial expenditure is contemplated ie., overseas patent protection or development or marketing of the invention.
It is important to realise that searching can never be conclusive and merely reduces the degree of uncertainty. Professionally conducted searches may range from a relatively inexpensive search conducted on a computer database to a comprehensive manual search of the patent and scientific literature. For further information about the cost of professionally conducted searches, please contact us.
Free (but limited) searches can also be conducted at a number of sites available on the Internet. Visit our Researching your Invention page for more information.
Are there different types of patents?
In Australia there are two types of patents - standard and innovation. Standard patents are preferred as their term is 20 years as opposed to a maximum term of eight years for an innovation patent. Innovation patents are recommended for products which are not highly technical and/or have a projected short market life.
What is the procedure for obtaining patent protection in Australia?
Standard patents
After the provisional application has been filed, the invention may be disclosed to others and its commercial worth tested. However, in some circumstances it may be desirable to delay disclosure until after a complete patent specification is filed and/or foreign patent protection is sought.
The provisional application remains in effect for 12 months. A complete specification must be filed before the expiration of the 12 month provisional period. Alternatively, filing the provisional specification can be omitted and the application can be accompanied by a complete specification in the first instance.
An examiner will then review the complete specification and conduct a search to check whether the invention is new. An opportunity is provided to overcome any objections raised by the examiner by argument and/or amendment of the specification.
Innovation patents
This type of patent is a simple and inexpensive alternative to the standard patent. It is useful where the invention is not sufficiently inventive to meet the inventiveness requirements for standard patents. It has replaced the petty patent and is attractive where rapid grant is desired, for example, due to the invention having a projected short market life. The innovation patent is granted without examination, however, it cannot be enforced until after examination has been requested and carried out and the innovation patent is certified. Innovation patents provide a useful tool for enforcement.
How do I obtain patent protection overseas?
Most countries are members of an international convention which allows overseas patent applications to claim the benefit of the filing date of an Australian patent application, provided they are filed within 12 months of the Australian application.
It may still be possible to file overseas patent applications after the 12 month date without claiming the benefit of the Australian filing date provided there has been no disclosure of the invention.
There are two procedures available for obtaining overseas patent protection:
Separate overseas patent applications
This involves filing separate applications in each individual country of interest. Europe may be protected by a single European patent application which potentially covers over 30 countries. Each separate application is then subject to a procedure which is similar to that described above for an Australian patent application.
International (PCT) patent application
An international or PCT (Patent Cooperation Treaty) application can be filed which allows for the designation of over 135 countries from a list including most industrialised nations.
The international application must later be converted into separate national applications in the individual countries or regions at an additional cost. The additional cost is similar to that which would be incurred in the separate applications process described in the paragraph above, but will not be incurred until up to two and a half years from the filing date of the initial Australian application. This enables the high costs of filing separate applications to be deferred.
International search and preliminary examination reports will also issue within this time, which will assist in deciding whether it is worthwhile converting the international application into separate national applications.
What rights does a patent provide?
A patent grants to the patentee a monopoly to exploit the invention in the country or countries in which protection has been obtained for a limited period of time (20 years in most countries, including Australia, subject to the payment of maintenance or renewal fees).
The patent is a right of property which means that, like other items of property, it can be assigned or licensed to others in return for a payment or royalty to the patentee. The patentee may also obtain legal relief to stop others using the invention without permission.
What does a patent attorney do?
A patent attorney has qualifications in both a technical field, such as a degree in science or engineering, and also in the field of intellectual property which includes such things as patents, trade marks, designs and plant breeders rights.
The role of the patent attorney is to act as the professional intermediary between technology and the law. A patent attorney consults with the inventor about his invention, provides advice on the various options for intellectual property protection, prepares a description of the invention and then represents the inventor in their dealings with the Patent Office.
Need help?
If you need help with your patent registration, then please contact us for further assistance.
Trade marks
What is a trade mark?
A trade mark is a sign which distinguishes the goods or services of a trader from those of other traders. The sign may be a word, letter, numeral, picture, symbol, shape, smell, colour or any aspect of packaging, or any combination of these.
Registration of a trade mark confers on the owner the right to exclusive use and/or control of the use of the trade mark for the goods or services for which it is registered or for related goods or services in certain circumstances.
Which trade marks can be registered?
In order to obtain registration, the trade mark must be capable of distinguishing the goods or services for which the trade mark application is lodged. A trade mark can be capable of distinguishing goods or services if it is "inherently adapted" to do so, such as an invented word with no particular meaning.
Even a word or sign which other traders would ordinarily wish to use to describe the goods or services - and which would thus be not inherently capable of acting as a distinguishing trade mark - can be registered if it has been used to such an extent that the sign actually does distinguish a trader's goods or services.
However, a trade mark will generally not be registered if it is substantially identical with, or deceptively similar to, an existing trade mark application or registration for the same, or similar or closely related, goods or services.
Should I do a search on my proposed trade mark?
A search can be conducted in order to check for the existence of trade mark applications and registrations which would impede or prevent registration of your proposed trade mark application, or which would be infringed by the use of your new trade mark.
It may also be advisable to conduct a search of common law (unregistered) trade marks, business and company names and Internet domain name registrations prior to filing or using a proposed trade mark in order to identify possible conflicting rights.
It is important to realise that searching can never be conclusive and merely reduces the degree of uncertainty. Searching is generally recommended before substantial expenditure is contemplated, such as before filing many foreign trade mark applications or before any significant commercialisation of goods or services for which the trade mark will be used.
What is the procedure for obtaining a trade mark registration in Australia?
File a trade mark application
Trade mark registrations are granted on applications filed at IP Australia, which incorporates the Australian Trade Marks Office.
The application must specify the trade mark itself, and include a list of all the products or services which are sold, or are intended to be sold, under the trade mark. If the trade mark is a logo, then representations of the logo have to be attached to the application.
Examination
Approximately 6 months after filing the application, an Examiner of Trade Marks will review the application and conduct a search to check whether the trade mark meets the criteria for registration.
An opportunity is provided to overcome any objections raised by the Examiner by counter-argument, possibly accompanied by evidence and/or amendment. Any objections raised by the Examiner should be overcome by 21 months from the date of the Examiner's first report.
Registration
When the Examiner is satisfied that there are no outstanding objections, and the opposition period expires the application proceeds to registration and a registration certificate issues upon payment of the registration fee.
Term of registration
The term of a trade mark registration expires 10 years from the date of filing the initial trade mark application. The trade mark registration may be renewed indefinitely for further period(s) of 10 years.
How do I obtain overseas protection for my trade mark?
Most countries are members of an international convention which allows foreign trade mark applications to claim the benefit of an Australian trade mark application, provided they are filed within six months of the Australian application.
It may still be possible to file trade mark applications, and obtain a valid trade mark registration, after the six month date without claiming the benefit of the Australian filing date, providing there has been no earlier use of the trade mark or earlier filed trade mark application by another party in the country concerned.
What rights does a trade mark registration provide?
A trade mark registration allows the owner of the registration to prevent the non-authorised use of the trade mark in relation to the same, or similar or closely related, goods or services, or, in the case of famous trade marks, in relation to any goods or services.
In the event that infringement of a registered trade mark is occurring, the owner of the trade mark may obtain legal relief to stop the infringement and to claim damages or an account of profits.
The trade mark registration can be assigned or licensed to others, for example in return for payment to the owner of the registration.
What is so special about having trade marks in my business?
The decision to adopt a trade mark can represent a very important step for a business or company. For example:
How should I go about selecting a good trade mark?
The following step-by-step process gives you a guide for correctly selecting your new trade mark.
Step 1
Wherever possible, it is best to adopt a trade mark which is:
Trade marks with the following features are relatively easy to register and protect, and there is usually sufficient opportunity for those with imagination to derive an appropriate mark:
Best: Newly invented words with no meaning, such as XEROXTM for photocopiers or MECCANOTM for construction toys.
Next best: Random or arbitrary names. While these names may have an existing meaning, this meaning is not connected with the goods or services they represent, such as SURFTM for washing powders or PELICANTM for pens.
Next best: Suggestive names are usually the first to spring to mind as they tend to identify some aspect of the goods or services that they represent, but they can be difficult to register. Examples are OXOTM for meat extracts, BUSHELLSTM for tea and BAND-AIDTM for bandages.
Last: Descriptive or laudatory names are the hardest to register and offer the least protection. For example, it would be almost impossible to obtain a registration for PERFECTION for soap.
Step 3
Make sure that you eliminate any marks having the following negative characteristics, as they are very difficult to register:
Directly descriptive words, such as HI-LUM for bright lights. Generic words used for a common product or service, such as SPEEDY for taxi service.
ACRONYMS which can be unpronounceable and confusing.
Step 4
Draw up a list of your possible marks and ask yourself the following questions:
Does the name have a similar sound or ring to that used by another party? For example, ELNATM, for sewing machines, is a well-known trade mark. A small variation like HELNA would be confusing.
Is the name or mark currently in use, or is it perhaps an existing business or company name?
Would the mark be one which your competitors may automatically wish, or be inclined, to use?
Will your customers make an immediate and lasting connection between the mark and your company?
Is the mark clever, pleasing and durable; or dull, fashionable and likely to lose its appeal?
Are there any rules that I should follow when using my trade mark?
Yes, there are a number of guidelines you should follow to prevent losing the rights you have obtained in the marks used by your business.
When using your trade mark:
A useful cross-check of correct trade mark usage is the following quick test:
Any sentence containing your trade mark should still make sense when your trade mark is removed. For example:
Correct Use: The DOONATM quilt is very warm.
Incorrect Use: The DOONATM is very warm.
Need help?
If you need help with your trade mark registration, then please contact us for further assistance.
Business names
What is a business name?
A business name is the name under which a business is conducted.
Must a business name be registered?
Registration of a business name is compulsory if you intend carrying on a business in a name other than your own, or in a name other than the name of a registered company. It must be registered before the business commences trading.
Registration of a business name is required by State or Territory legislation. Where trading occurs in more than one State or Territory, the business name must be registered under the laws of each one.
Registration in one State or Territory does not mean that the business name will be automatically accepted for registration in another. There cannot be more than one registration for a particular name in each State or Territory.
Why are business names registered?
Registration of a business name primarily serves as a means of identifying the holder(s) of a registered business name by providing a central list of names that is available to the public.
What are the differences between trade marks and business names?
There are a number of differences between trade marks and business names. Business owners need to be aware of the differences so that they can understand how each form of naming contributes separate distinct advantages to the business.
A brief summary of the differences is given below:
Need help?
If you need help with your business name registration, then please contact us for further assistance.
Designs
What is a design registration?
A design registration is a legal document which confers on an author of the design or a person claiming rights from the author of the design a monopoly for a limited time to make, use, hire or sell the design.
A design registration protects the overall appearance of a product and in particular it protects the visual features including the shape, configuration, pattern or ornamentation of the product. It is important to note that design registrations do not protect the function of an article and an article that functions in the same way as a registered design, but looks different to the registered design, may not infringe the design registration.
Does my design have to be new?
In order to obtain registration of a design it is necessary that the design be new and distinctive.
This means that your design must not be identical to a design that has been publicly used in Australia or a design that has been published anywhere in the world, or substantially similar in overall impression to such a design.
Therefore a design must be kept confidential before a design application is filed at the Designs Office. Any non-confidential disclosure of the design, such as by an oral presentation, printed publication, offer for sale or public use of the design, before the filing date of an application to register the design will invalidate any design registration granted on the application.
Should I do a search of my proposed design?
A search can be conducted in order to check that a design is new and/or does not conflict with or infringe any existing design rights.
It is important to realise that searching can never be conclusive and merely reduces the degree of uncertainty. Searching is generally recommended before substantial expenditure is contemplated, such as before filing overseas design applications or before developing or marketing of the design.
What is the procedure for obtaining a design registration in Australia?
File a design application
Design registrations are granted on applications filed at IP Australia, which incorporates the Designs Office.
The application must include an application form and representations showing the design. The representations may be drawings or photographs.
In certain situations, a design application can include more than one design.
Registration
A design application firstly undergoes a formalities examination, at the successful conclusion of which, the design is registered. A registered design is not enforceable until the registration has been examined and certified by the Designs Office.
Publication
As an alternative to registration, an applicant may choose to have his or her design published. Publication of a design establishes no rights in the design for its owner, but puts the design on the public record and effectively prevents anyone else from obtaining design rights in the design or designs that are substantially similar in overall impression to the published design.
Examination
Examination of design registrations is not compulsory. However a registration is not enforceable until the registration has been examined and certified by the Designs Office.
Applicants have the option of requesting examination at any time after the design has undergone the formalities examination. Additionally, third parties can request examination and lodge prior art material.
An examiner of designs will review the application and may conduct a search to check whether the design is new and distinctive. An opportunity is provided to overcome any objections raised by the examiner by argument and/or amendment of the application.
Term of a design registration
The initial term of a design registration expires five years from the filing date of the design application in which the design was first disclosed. The registration can be renewed upon payment of a renewal fee to a maximum term of 10 years from its filing date.
How do I obtain design protection overseas?
Most countries are members of an international convention which allows an overseas design applications to claim the benefit of the filing date of an Australian design application, provided they are filed within six months of the Australian application.
It may still be possible to file overseas design applications after the six month date without claiming the benefit of the Australian filing date, providing there has been no disclosure of the design. However, now that designs are registered and published without examination it is likely that the design will be published within one to two months of filing.
What rights does a design registration provide?
A design registration allows the owner of the design registration to prevent others from using or commercially dealing in the design, or a design that is substantially similar in overall impression to the registered design.
In the event that infringement of a registered design is occurring, the owner of the design may obtain legal relief to stop the infringement and to claim damages or an account of profits. As mentioned above, legal relief can only be obtained after the registration has been examined and certified by the Designs Office.
There is an exemption from infringement known as the 'spare parts' exemption. This exemption relates to designs that are used in repairing products made up of two or more parts, if the use is to restore the overall appearance of the product.
The design registration can be assigned or licensed to others in return for a payment of royalty to the owner of the design.
Need help?
If you need help with your design registration, then please contact us for further assistance.
Costs
Attorneys will typically charge an hourly rate for their time, plus any disbursements and official fees levied by the respective IP offices, to provide you with professional advice and to attend to your matter. Attorney charge-out-rates conform with the advisory rates set by the relevant peak body, which is the Institute of Patent and Trade Marks Attorneys of Australia.
Because the time taken and hence the cost will vary depending on the complexity and detail of the matter to be handled, it is not very meaningful to quote standard charges out of context.
The best way to establish the potential cost for your situation is by contacting us directly and explaining your commercial requirements. We will then be able to provide you with a firm estimate of the anticipated expenses, the likely time frames and expected outcomes.
Need help?
If you need more detailed information regarding costs, please contact us for further assistance.
Patents
Trade marks
Business names
Designs
Costs
Patents
What is a patent?
A patent is a legal document which confers on an inventor or a person claiming rights from the inventor a monopoly for a limited time to make, use, hire or sell an invention. In return for this monopoly, the inventor or applicant must disclose the invention to the public for the benefit of advancing technology. This is done by way of a patent specification which is a written description of the invention.
What can be patented?
Any new and inventive device, substance or process which is commercially useful can be patented. Examples include mechanical devices, electrical circuits, computer technology, business methods, advanced materials, chemical compounds, pharmaceuticals, micro organisms, plants, genetically altered non-human life-forms and processes for their manufacture.
Does my invention have to be new?
The invention must be new at the date of filing a patent application. This means that there should be no disclosure of the invention before a patent application is filed unless it is under an obligation of confidentiality. Disclosure may occur when there has been an oral presentation, printed publication, offer for sale or public use of the invention. Some countries, including Australia, have a grace period that may cover disclaimers made by an inventor. However, we do not recommend relying on the grace period as other jurisdictions, such as Europe, do not have comparable conditions.
Should I do a search of my invention?
A search can be conducted in order to check that an invention is new and/or does not conflict with or infringe any existing patent rights. Searching is generally recommended before substantial expenditure is contemplated ie., overseas patent protection or development or marketing of the invention.
It is important to realise that searching can never be conclusive and merely reduces the degree of uncertainty. Professionally conducted searches may range from a relatively inexpensive search conducted on a computer database to a comprehensive manual search of the patent and scientific literature. For further information about the cost of professionally conducted searches, please contact us.
Free (but limited) searches can also be conducted at a number of sites available on the Internet. Visit our Researching your Invention page for more information.
Are there different types of patents?
In Australia there are two types of patents - standard and innovation. Standard patents are preferred as their term is 20 years as opposed to a maximum term of eight years for an innovation patent. Innovation patents are recommended for products which are not highly technical and/or have a projected short market life.
What is the procedure for obtaining patent protection in Australia?
Standard patents
- File a patent application
- Provisional specification
After the provisional application has been filed, the invention may be disclosed to others and its commercial worth tested. However, in some circumstances it may be desirable to delay disclosure until after a complete patent specification is filed and/or foreign patent protection is sought.
The provisional application remains in effect for 12 months. A complete specification must be filed before the expiration of the 12 month provisional period. Alternatively, filing the provisional specification can be omitted and the application can be accompanied by a complete specification in the first instance.
- Complete Specification
- Publication
- Examination
An examiner will then review the complete specification and conduct a search to check whether the invention is new. An opportunity is provided to overcome any objections raised by the examiner by argument and/or amendment of the specification.
- Acceptance and grant
- Annual fees
Innovation patents
This type of patent is a simple and inexpensive alternative to the standard patent. It is useful where the invention is not sufficiently inventive to meet the inventiveness requirements for standard patents. It has replaced the petty patent and is attractive where rapid grant is desired, for example, due to the invention having a projected short market life. The innovation patent is granted without examination, however, it cannot be enforced until after examination has been requested and carried out and the innovation patent is certified. Innovation patents provide a useful tool for enforcement.
How do I obtain patent protection overseas?
Most countries are members of an international convention which allows overseas patent applications to claim the benefit of the filing date of an Australian patent application, provided they are filed within 12 months of the Australian application.
It may still be possible to file overseas patent applications after the 12 month date without claiming the benefit of the Australian filing date provided there has been no disclosure of the invention.
There are two procedures available for obtaining overseas patent protection:
Separate overseas patent applications
This involves filing separate applications in each individual country of interest. Europe may be protected by a single European patent application which potentially covers over 30 countries. Each separate application is then subject to a procedure which is similar to that described above for an Australian patent application.
International (PCT) patent application
An international or PCT (Patent Cooperation Treaty) application can be filed which allows for the designation of over 135 countries from a list including most industrialised nations.
The international application must later be converted into separate national applications in the individual countries or regions at an additional cost. The additional cost is similar to that which would be incurred in the separate applications process described in the paragraph above, but will not be incurred until up to two and a half years from the filing date of the initial Australian application. This enables the high costs of filing separate applications to be deferred.
International search and preliminary examination reports will also issue within this time, which will assist in deciding whether it is worthwhile converting the international application into separate national applications.
What rights does a patent provide?
A patent grants to the patentee a monopoly to exploit the invention in the country or countries in which protection has been obtained for a limited period of time (20 years in most countries, including Australia, subject to the payment of maintenance or renewal fees).
The patent is a right of property which means that, like other items of property, it can be assigned or licensed to others in return for a payment or royalty to the patentee. The patentee may also obtain legal relief to stop others using the invention without permission.
What does a patent attorney do?
A patent attorney has qualifications in both a technical field, such as a degree in science or engineering, and also in the field of intellectual property which includes such things as patents, trade marks, designs and plant breeders rights.
The role of the patent attorney is to act as the professional intermediary between technology and the law. A patent attorney consults with the inventor about his invention, provides advice on the various options for intellectual property protection, prepares a description of the invention and then represents the inventor in their dealings with the Patent Office.
Need help?
If you need help with your patent registration, then please contact us for further assistance.
Trade marks
What is a trade mark?
A trade mark is a sign which distinguishes the goods or services of a trader from those of other traders. The sign may be a word, letter, numeral, picture, symbol, shape, smell, colour or any aspect of packaging, or any combination of these.
Registration of a trade mark confers on the owner the right to exclusive use and/or control of the use of the trade mark for the goods or services for which it is registered or for related goods or services in certain circumstances.
Which trade marks can be registered?
In order to obtain registration, the trade mark must be capable of distinguishing the goods or services for which the trade mark application is lodged. A trade mark can be capable of distinguishing goods or services if it is "inherently adapted" to do so, such as an invented word with no particular meaning.
Even a word or sign which other traders would ordinarily wish to use to describe the goods or services - and which would thus be not inherently capable of acting as a distinguishing trade mark - can be registered if it has been used to such an extent that the sign actually does distinguish a trader's goods or services.
However, a trade mark will generally not be registered if it is substantially identical with, or deceptively similar to, an existing trade mark application or registration for the same, or similar or closely related, goods or services.
Should I do a search on my proposed trade mark?
A search can be conducted in order to check for the existence of trade mark applications and registrations which would impede or prevent registration of your proposed trade mark application, or which would be infringed by the use of your new trade mark.
It may also be advisable to conduct a search of common law (unregistered) trade marks, business and company names and Internet domain name registrations prior to filing or using a proposed trade mark in order to identify possible conflicting rights.
It is important to realise that searching can never be conclusive and merely reduces the degree of uncertainty. Searching is generally recommended before substantial expenditure is contemplated, such as before filing many foreign trade mark applications or before any significant commercialisation of goods or services for which the trade mark will be used.
What is the procedure for obtaining a trade mark registration in Australia?
File a trade mark application
Trade mark registrations are granted on applications filed at IP Australia, which incorporates the Australian Trade Marks Office.
The application must specify the trade mark itself, and include a list of all the products or services which are sold, or are intended to be sold, under the trade mark. If the trade mark is a logo, then representations of the logo have to be attached to the application.
Examination
Approximately 6 months after filing the application, an Examiner of Trade Marks will review the application and conduct a search to check whether the trade mark meets the criteria for registration.
An opportunity is provided to overcome any objections raised by the Examiner by counter-argument, possibly accompanied by evidence and/or amendment. Any objections raised by the Examiner should be overcome by 21 months from the date of the Examiner's first report.
Registration
When the Examiner is satisfied that there are no outstanding objections, and the opposition period expires the application proceeds to registration and a registration certificate issues upon payment of the registration fee.
Term of registration
The term of a trade mark registration expires 10 years from the date of filing the initial trade mark application. The trade mark registration may be renewed indefinitely for further period(s) of 10 years.
How do I obtain overseas protection for my trade mark?
Most countries are members of an international convention which allows foreign trade mark applications to claim the benefit of an Australian trade mark application, provided they are filed within six months of the Australian application.
It may still be possible to file trade mark applications, and obtain a valid trade mark registration, after the six month date without claiming the benefit of the Australian filing date, providing there has been no earlier use of the trade mark or earlier filed trade mark application by another party in the country concerned.
What rights does a trade mark registration provide?
A trade mark registration allows the owner of the registration to prevent the non-authorised use of the trade mark in relation to the same, or similar or closely related, goods or services, or, in the case of famous trade marks, in relation to any goods or services.
In the event that infringement of a registered trade mark is occurring, the owner of the trade mark may obtain legal relief to stop the infringement and to claim damages or an account of profits.
The trade mark registration can be assigned or licensed to others, for example in return for payment to the owner of the registration.
What is so special about having trade marks in my business?
The decision to adopt a trade mark can represent a very important step for a business or company. For example:
- your trade mark will act as a line of communication between yourself and your clients and serve to distinguish your goods and services from those of your competitors;
- your trade mark will become an important asset of your business or company and contribute to the goodwill generated by your business or company;
- your trade mark should be chosen carefully and protected by registration under the Trade Marks Act and correctly used;
- a registered trade mark gives you an enforceable right to prevent others from using the trade mark in connection with the goods or services for which it is registered.
How should I go about selecting a good trade mark?
The following step-by-step process gives you a guide for correctly selecting your new trade mark.
Step 1
Wherever possible, it is best to adopt a trade mark which is:
- Easy to pronounce
- Easy to spell
- Easy to remember
- Easy to faithfully reproduce verbally or in writing
- Able to be used worldwide without alternative meanings in other languages
- Easy to distinguish from any trade marks used by your competitors.
Trade marks with the following features are relatively easy to register and protect, and there is usually sufficient opportunity for those with imagination to derive an appropriate mark:
Best: Newly invented words with no meaning, such as XEROXTM for photocopiers or MECCANOTM for construction toys.
Next best: Random or arbitrary names. While these names may have an existing meaning, this meaning is not connected with the goods or services they represent, such as SURFTM for washing powders or PELICANTM for pens.
Next best: Suggestive names are usually the first to spring to mind as they tend to identify some aspect of the goods or services that they represent, but they can be difficult to register. Examples are OXOTM for meat extracts, BUSHELLSTM for tea and BAND-AIDTM for bandages.
Last: Descriptive or laudatory names are the hardest to register and offer the least protection. For example, it would be almost impossible to obtain a registration for PERFECTION for soap.
Step 3
Make sure that you eliminate any marks having the following negative characteristics, as they are very difficult to register:
Directly descriptive words, such as HI-LUM for bright lights. Generic words used for a common product or service, such as SPEEDY for taxi service.
ACRONYMS which can be unpronounceable and confusing.
Step 4
Draw up a list of your possible marks and ask yourself the following questions:
Does the name have a similar sound or ring to that used by another party? For example, ELNATM, for sewing machines, is a well-known trade mark. A small variation like HELNA would be confusing.
Is the name or mark currently in use, or is it perhaps an existing business or company name?
Would the mark be one which your competitors may automatically wish, or be inclined, to use?
Will your customers make an immediate and lasting connection between the mark and your company?
Is the mark clever, pleasing and durable; or dull, fashionable and likely to lose its appeal?
Are there any rules that I should follow when using my trade mark?
Yes, there are a number of guidelines you should follow to prevent losing the rights you have obtained in the marks used by your business.
When using your trade mark:
- Never copy or imitate in any way another business or company's names, trade marks, logos or get-up.
- In some cases, a search of the Business Names and Company Names Register, as well as the Trade Mark Register, should be conducted before adopting your trade mark.
- Use your trade mark in a manner commensurate with the image you require.
- Avoid using silly cartoons, jokes or generic applications of your mark.
- Use your trade mark consistently.
- Never change the spelling or the appearance of the mark without first discussing the proposed changes with your patent and trade mark attorney.
- Distinguish your trade marks from the surrounding words.
- It is suggested that you use a trade mark symbol next or near to your trade mark.
- Unless your trade mark is in a stylised form, begin your trade mark with a capital letter.
- Always use your trade mark as an ADJECTIVE.
- Never use your trade mark as a NOUN or VERB.
- Accompany your trade mark by a generic term, eg DOONATM quilt.
A useful cross-check of correct trade mark usage is the following quick test:
Any sentence containing your trade mark should still make sense when your trade mark is removed. For example:
Correct Use: The DOONATM quilt is very warm.
Incorrect Use: The DOONATM is very warm.
Need help?
If you need help with your trade mark registration, then please contact us for further assistance.
Business names
What is a business name?
A business name is the name under which a business is conducted.
Must a business name be registered?
Registration of a business name is compulsory if you intend carrying on a business in a name other than your own, or in a name other than the name of a registered company. It must be registered before the business commences trading.
Registration of a business name is required by State or Territory legislation. Where trading occurs in more than one State or Territory, the business name must be registered under the laws of each one.
Registration in one State or Territory does not mean that the business name will be automatically accepted for registration in another. There cannot be more than one registration for a particular name in each State or Territory.
Why are business names registered?
Registration of a business name primarily serves as a means of identifying the holder(s) of a registered business name by providing a central list of names that is available to the public.
What are the differences between trade marks and business names?
There are a number of differences between trade marks and business names. Business owners need to be aware of the differences so that they can understand how each form of naming contributes separate distinct advantages to the business.
A brief summary of the differences is given below:
- Unlike a trade mark, which identifies the goods or services of a trade mark owner, a business name registration identifies the individual owners of a business.
- Registration of a trade mark protects the legal rights of the owner of the trade mark when the owner seeks to use and control the mark. Registration gives the owner a monopoly property right in that mark.
- Registration of a business name does NOT confer any property rights in that name, but it does help to identify you with your business.
- Registration of trade marks in Australia is covered by the Trade Marks Act and is administered by IP Australia.
- Registration of business names is covered by State and Territory legislation, and is administered by the individual State and Territory Offices of Business Names.
- Registration of a trade mark IS NOT compulsory, but registration does strengthen your ability to take action against others who may be harming your reputation.
- Registration of a business name IS compulsory and failure to do so may result in fines being imposed.
Need help?
If you need help with your business name registration, then please contact us for further assistance.
Designs
What is a design registration?
A design registration is a legal document which confers on an author of the design or a person claiming rights from the author of the design a monopoly for a limited time to make, use, hire or sell the design.
A design registration protects the overall appearance of a product and in particular it protects the visual features including the shape, configuration, pattern or ornamentation of the product. It is important to note that design registrations do not protect the function of an article and an article that functions in the same way as a registered design, but looks different to the registered design, may not infringe the design registration.
Does my design have to be new?
In order to obtain registration of a design it is necessary that the design be new and distinctive.
This means that your design must not be identical to a design that has been publicly used in Australia or a design that has been published anywhere in the world, or substantially similar in overall impression to such a design.
Therefore a design must be kept confidential before a design application is filed at the Designs Office. Any non-confidential disclosure of the design, such as by an oral presentation, printed publication, offer for sale or public use of the design, before the filing date of an application to register the design will invalidate any design registration granted on the application.
Should I do a search of my proposed design?
A search can be conducted in order to check that a design is new and/or does not conflict with or infringe any existing design rights.
It is important to realise that searching can never be conclusive and merely reduces the degree of uncertainty. Searching is generally recommended before substantial expenditure is contemplated, such as before filing overseas design applications or before developing or marketing of the design.
What is the procedure for obtaining a design registration in Australia?
File a design application
Design registrations are granted on applications filed at IP Australia, which incorporates the Designs Office.
The application must include an application form and representations showing the design. The representations may be drawings or photographs.
In certain situations, a design application can include more than one design.
Registration
A design application firstly undergoes a formalities examination, at the successful conclusion of which, the design is registered. A registered design is not enforceable until the registration has been examined and certified by the Designs Office.
Publication
As an alternative to registration, an applicant may choose to have his or her design published. Publication of a design establishes no rights in the design for its owner, but puts the design on the public record and effectively prevents anyone else from obtaining design rights in the design or designs that are substantially similar in overall impression to the published design.
Examination
Examination of design registrations is not compulsory. However a registration is not enforceable until the registration has been examined and certified by the Designs Office.
Applicants have the option of requesting examination at any time after the design has undergone the formalities examination. Additionally, third parties can request examination and lodge prior art material.
An examiner of designs will review the application and may conduct a search to check whether the design is new and distinctive. An opportunity is provided to overcome any objections raised by the examiner by argument and/or amendment of the application.
Term of a design registration
The initial term of a design registration expires five years from the filing date of the design application in which the design was first disclosed. The registration can be renewed upon payment of a renewal fee to a maximum term of 10 years from its filing date.
How do I obtain design protection overseas?
Most countries are members of an international convention which allows an overseas design applications to claim the benefit of the filing date of an Australian design application, provided they are filed within six months of the Australian application.
It may still be possible to file overseas design applications after the six month date without claiming the benefit of the Australian filing date, providing there has been no disclosure of the design. However, now that designs are registered and published without examination it is likely that the design will be published within one to two months of filing.
What rights does a design registration provide?
A design registration allows the owner of the design registration to prevent others from using or commercially dealing in the design, or a design that is substantially similar in overall impression to the registered design.
In the event that infringement of a registered design is occurring, the owner of the design may obtain legal relief to stop the infringement and to claim damages or an account of profits. As mentioned above, legal relief can only be obtained after the registration has been examined and certified by the Designs Office.
There is an exemption from infringement known as the 'spare parts' exemption. This exemption relates to designs that are used in repairing products made up of two or more parts, if the use is to restore the overall appearance of the product.
The design registration can be assigned or licensed to others in return for a payment of royalty to the owner of the design.
Need help?
If you need help with your design registration, then please contact us for further assistance.
Costs
Attorneys will typically charge an hourly rate for their time, plus any disbursements and official fees levied by the respective IP offices, to provide you with professional advice and to attend to your matter. Attorney charge-out-rates conform with the advisory rates set by the relevant peak body, which is the Institute of Patent and Trade Marks Attorneys of Australia.
Because the time taken and hence the cost will vary depending on the complexity and detail of the matter to be handled, it is not very meaningful to quote standard charges out of context.
The best way to establish the potential cost for your situation is by contacting us directly and explaining your commercial requirements. We will then be able to provide you with a firm estimate of the anticipated expenses, the likely time frames and expected outcomes.
Need help?
If you need more detailed information regarding costs, please contact us for further assistance.