AMPLIFY YOUR BRANDA TRADE MARK PACKAGE FOR START-UPS

Griffith Hack Melbourne – Sydney – Brisbane - Perth

Businesses need to be equipped to establish, protect and defend their brands through trade marks.

Our simple package has been designed to help start-ups protect their brand early on.

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We get it. Starting and growing a new business is exciting, frustrating, thrilling, scary and rewarding.

It probably feels like you’ve got a million and one things

on your plate right now, all demanding your attention.

We’d like to add one more to think about – trade marks.

But rather than be complicated, we’re going to make it

easy for you. And at the same time, potentially save you a

lot of hassle down the track.

A trade mark is a critical part of your business. It’s any sign or

symbol used to distinguish your goods and services from those

of your competitors. A trade mark includes a word, image, device,

colour, shape or sound.

A good trade mark is a sign that’s unique to your business.

Strong trade marks are invented words like Google, or taking an

ordinary word and using it out of context, like Apple when used

in connection with computers. When choosing a trade mark, it is

important to adopt something which doesn’t describe the nature

or characteristics of your product or the purpose of your services.

The first user of a trade mark in Australia can claim to be the

owner of the trade mark. So, it’s a good idea to consider your

trade mark early in the life of your business. Searching the Trade

Marks Register will ensure you don’t inadvertently start using a

third party’s trade mark or something similar to their trade mark

in relation to the same or similar goods /services. Applying early

to register your trade mark should make it easier to register and it

will provide you with a defence to infringement once registered.

A company or business name registration are not the same things

as a trade mark and do not give exclusive and enforceable rights

in respect of a name, word, logo or other trade mark. Only a trade

mark registration will provide such rights in respect of certain

goods and/or services.

Griffith Hack’s trade mark team has extensive experience assisting

clients in identifying and optimising the core value of their

business and brand. We want to give entrepreneurs one less thing

to worry about as they grow their businesses so we have created

a range of trade mark service options especially for start-ups.

Read on and get in touch to find out how we can help you.

Nicola ScheepersPrincipal, Lawyer

T: (+61) 2 9925 5961

E: nicola.scheepers@griffithhack.com

Griffith Hack trade mark search package options

FAQs

Securing your trade mark in Australia

Glossary

Contents

Griffith Hack trade mark search package options

OPTION A: Identical or Near-Identical Knock-out - Trade Marks Register search for identical and near identical trade marks;

- Brief opinion on likelihood of trade mark being registered and possible issues; and

- Opinion on distinctiveness of trade mark.

Cost: $250+GST

Your search needs Option A Option B Option C

Trade mark distinctiveness 3 3 3

Identical or near-identical trade marks search 3 3 3

Deceptively similar trade marks search 3 3

Full registrability and unregistered trade marks 3

OPTION B: Identical and Deceptively Similar marks search- Trade Marks Register search for identical, near identical and similar trade marks;

- Brief opinion on likelihood of trade mark being registered and possible issues; and

- Opinion on distinctiveness of trade mark.

COST: $450+GST

OPTION C: Full Registrability and unregistered trade mark search with comment.

- Trade Marks Register search for identical, near identical and similar trade marks;

- Detailed opinion on likelihood of trade mark being registered and possible issues;

- Opinion on distinctiveness of trade mark; and

- Opinion on possible response options to likely objections.

COST: $995+GST

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Next stepsGet in touch with one of our trade marks experts to discuss which package is right for you.

Nicola ScheepersPrincipal, LawyerT: (+61) 2 9925 5961

E: nicola.scheepers@griffithhack.com

Simon GapesAssociate, Trade MarksT: (+61) 3 9243 8227

E: simon.gapes@griffithhack.com

Shannon FatiAssociate, Trade MarksT: (+61) 7 3232 1732

E: shannon.fati@griffithhack.com

Our simple package has been designed to help start-ups and entrepreneurs protect their

brand early on, to avoid unwanted risk and costs down the track.

What is a trade mark?A trade mark is a sign used by traders to distinguish their goods/services

from those of other traders for example, a word, logo or image.

What is a brand?A brand refers to the identity of a business in the context of the goods and

services it provides and what it stands for in terms of consumer concerns

such as service, quality of a product or service offering. A brand is a broader

concept than a trade mark.

Do I need a trade mark if I have a business name or a company name?Yes. The registration of a company name or a business name does not

provide any enforceable rights to your trade mark.

How do I know if someone else has already registered my trade mark?A search of the Trade Marks Register and the marketplace should be carried

out before the trade mark is used and before registration is sought.

If I register my trade mark in Australia does it mean that I have worldwide protection?No. Protection for your trade mark needs to be sought in each country in

which the trade mark is or will be used.

What information is needed to file a trade mark application?• The Applicant’s full name and address

• The services for which the registration is to be sought. Follow this link to

access a Trade Marks Classification list and search function:

http://xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml

Do I need to be using my trade mark before I can register it?No. Failure to use the trade mark for a continuous period of three years once

registered could make the registration vulnerable to removal from the Register

for non-use.

FAQs

FA

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How long will it take for my trade mark to be registered?The earliest that a trade mark can be registered in Australia is approximately

7-8 months from the filing date. But claim to ownership will be from the filing

date or the first use date as applicable.

Must I wait until my trade mark is registered before I use it?If you have not done a search before a trade mark application was filed, it is

advisable to wait until the trade mark is registered before you start using it.

Alternatively, a search can be done at any time to clear the trade mark for use

before it is registered.

How long is my trade mark valid once registered?The registration of a trade mark is effective for 10 years and can be renewed for

further 10 year increments subject to payment of renewal fees.

Why should I register my trade mark?The benefits of registering a trade mark include:

• The owner of a registered trade mark is granted the exclusive right to use or

authorise the use of the mark in respect of the goods and services for which

it is registered.

• Registration enables the owner to prevent or take action against the

unauthorised use of the same or similar mark by a third party, in relation to

the same or closely related goods or services.

• Registration provides a statutory right to sue for infringement which is a

more efficient and cost effective way to enforce rights as compared to

establishing a claim for misleading and deceptive conduct or passing off,

which requires the trade mark to have a reputation for the relevant goods

and/or services.

• Third parties may be deterred from adopting the same or similar mark after

conducting a search of the Trade Marks Register prior to selecting a trade

mark for their business.

• If a third party attempts to register a trade mark that is the same or

similar to a trade mark registered in respect of the same or similar goods

or services, IP Australia should cite the registered or pending mark as an

obstacle to the third party obtaining registration of their trade mark.

• A registered trade mark can be sold, licenced or assigned to a third party.

• The owner can give the Australian Customs Office a notice objecting to the

importation of goods that infringe the registered mark.

• Registration in Australia can assist with providing a basis for obtaining

registration in other jurisdictions.

FAQs

FA

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Cost: At most stages of this flow chart, costs may be incurred. Costs estimates are available on request.

Choose from one of our package options for your search.

Visit www.amplia.one to find out more about filing your trade mark using our online IP management platform, Amplia.

Contact one of our trade mark experts to discuss how we can support you during these stages

Renewals can be done via Amplia should you choose to use the platform.

Securing your trade mark in Australia

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6-8 weeks

2-4 weeks

10 years

2 months

Trade mark application filed (fees apply)

File expedited examination (optional)

Examination(3-4 months after application filed)

Pre-filing Search

Examiner’s report issued

Opposition period ends

Registration

Acceptance due (extendible)

Renewal of trade mark(fees apply)

To check availability , likelihood of objections, similarity to third

party trade marks

Official Filing Receipt issued

Application is on the Australian Trade Mark Database

Claim priority overseas using AU lodgement date within 6

months of filing in AU

15 month period to respond to objections (extensions of

time up to 21 months allowed subject to fees

Notice of Acceptance issued

Trade Mark published in Australian Trade Mark Journal

Opposition period commences

Open to opposition from third parties

If an opposition to the trademark was successful then

registration will be refused

Certificate of Registration issued

If no objections are raised in examination the application will

be accepted

Amplia is a new approach to trade marks and a progressive way

of thinking about IP. It puts you in control, enabling you to file,

monitor and manage your trade mark portfolio. And best of all,

Griffith Hack’s globally recognised experts are just a click away.

To watch the video and book a demo visit: www.amplia.one

AMPLIAPUTTING YOU IN CONTROL OF YOUR TRADE MARK PORTFOLIO

Griffith Hack Melbourne – Sydney – Brisbane - Perth

GlossaryClasses and Classification System

A trade mark application must list the goods and/or services that the applicant will provide under the trade mark. Goods and services must be classified in accordance with an internationally recognised system called the Nice Classification. The Nice Classification system is used by most other Trade Marks Offices around the world.

Company and Business Name

A company is the legal entity associated with your business and a business name is the name your business operates under. A company registration and a business name registration does not give exclusive and enforceable rights to the holder in respect of a name or trade mark. Only a trade mark registration will provide such rights for certain goods and/or services.

Convention Priority

A convention priority application is made where a trade mark owner has filed an application in Australia and then makes an application for the same trade mark in another country within six months of the filing date in Australia. The subsequent trade mark will, if registered, be deemed to be registered as of the filing date of the application in Australia rather than the actual date of filing of the application in the relevant country.

Deceptively Similar

A trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to cause deception and confusion amongst consumers. Two trade marks may be considered to be deceptively similar if they have a similar look, sound or idea.

Descriptiveness and Distinctives

To be accepted for registration, a trade mark must not describe a characteristic or quality of the goods and/or services covered, such as quality, quantity, intended purpose or geographic origin. A trade mark must also be sufficiently distinctive i.e. not a common or laudatory descriptive term used for the goods and services.

Domain Name

A domain name is used to uniquely identify a website. A domain name does not give exclusive and enforceable rights in the words comprising the domain name, and use of a domain name could potentially infringe another trader’s trade mark registration.

International Registration

The Madrid Protocol is a treaty that provides for the international registration of a trade mark. It allows for the filing for registration of a trade mark in member countries to the Madrid Protocol within one application. Once filed, the trade mark is examined in accordance with the laws of each member country designated in the international registration. The applicant therefore avoids the costs associated with having to instruct a different attorney in each country to file the application.

Removal for Non-use

In some instances, it may be possible to remove a registered mark from the Trade Marks Register on the basis that it has not been used for the past three years on or in relation to the goods or services for which it is registered.

Trade Mark

A trade mark is sometimes called a brand and is a way of identifying a product or service from other traders’ goods or services. A trade mark includes a letter, number, word, phrase, slogan, shape, logo, device or combination of these.

Glo

ssary

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About Griffith Hack

Griffith Hack is a leading Intellectual Property firm.

Based in Melbourne, Sydney, Brisbane and Perth, Griffith Hack’s Patent, Trade Mark and Legal teams provide an integrated service focussed on the protection, enforcement and defence of your brand and other intellectual assets.

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GH PTM Pty Ltd (ACN 615 893 055) t/as Griffith Hack and GH Law Pty Ltd (ACN 615 894 365) t/as Griffith Hack Lawyers are subsidiaries of Xenith IP Group Limited (ACN 607 893 209). Further information about Xenith IP Group and its other subsidiaries is available at xenithip.com