Trade Marks Law

Are you looking to register a trade mark in Brisbane?

Registering a trade mark can be daunting and involve complexities, so you may want assistance to save time and energy and make the process as smooth and stress-free as possible.

At Tamas Lawyers, we aim to provide professional and efficient service tailored to suit your individual needs.

We will work with you to protect your brand and image, and guide you through the process of registering a suitable trade mark.

Trade mark registration can be an effective way of securing your brand and its reputation while enhancing your presence in the marketplace.

Registering a trade mark may also prevent others from using branding that exploits the image and reputation your company has built up.

Another benefit of trade mark protection is to set your business apart from competitors and so distinguish your goods and services from those of competing businesses.

A registered trade mark can be a valuable asset that forms part of your marketing and branding strategy and stops competitors taking away your work.

We offer a comprehensive range of trade mark services, which include:

providing advice on trade mark registration requirements;
conducting thorough trade mark searches;
preparing, filing, and prosecuting trade mark applications, both locally and internationally under the Madrid Protocol;
dvising on trade mark oppositions, and acting in opposition proceedings;
advising and acting in relation to removal actions, and defending actions for trade mark removal;
providing advice on infringements, and acting in relation to trade mark infringements;
advising on trade mark disputes, and acting in trade mark litigation; and
advising on trade mark assignments and transmissions.

What is a Trade Mark?

The Trade Marks Act 1995 (Cth) defines ‘trade mark’ as “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

A ‘sign’, under the Trade Marks Act, can include “any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.”

Kinds of Trade Marks

It follows that a trade mark can be a wide variety of ‘signs’ such as a word, shape, scent, image, logo, sound, colour, phrase, number, moving image, aspect of packaging, or combinations of these.

Where there are two or more trade marks that materially resemble each other, and they only differ in respect of limited features such as the colour of the trade mark, or representations as to number, price, quality or names of places, or representations as to the goods or services in relation to which the trade marks are used, then they may be registered as a series trade mark.

This way, a number of related trade marks, or variations of a trade mark where the main identifying feature is the same, may be protected as a series trade mark.

All trade marks in the series should be included in the same application. A series application is likely to be more costly than a standard trade mark application.

Registering a Trade Mark

Before applying for trade mark registration, it is important to conduct a thorough trade mark search to see whether the proposed trade mark is the same or similar to some other trade mark.

If your trade mark is considered to be substantially identical with or deceptively similar to another trade mark (including both a registered and pending trade mark), or if using the trade mark in relation to the same or similar goods or services could cause confusion, then your trade mark may not be registered or its use could amount to trade mark infringement.

As part of the registration requirements, you will need to show that your trade mark is capable of distinguishing the goods or services in respect of which you seek to register the trade mark, from the goods or services of other persons.

Also, you need to select the classes of goods and services with regard to which you will use the trade mark.

Goods and services are divided into 45 different trade mark classes under the Nice classification system, consisting of 34 classes of goods and 11 classes of services.

It is of importance that the right classes of goods and services are selected because the trade mark will only be protected for the particular goods or services that are specified in the trade mark application.

Madrid Protocol Applications

The Madrid Protocol (the Protocol Relating to the Madrid Agreement concerning the International Registration of Marks) is an international treaty that allows for a streamlined process to file applications for international registration of trade marks.

It is administered by the International Bureau of the World Intellectual Property Organization (‘WIPO’) based in Geneva, Switzerland.

The Madrid Protocol came into force on 1 April 1996, and functions under the Madrid Agreement (the Madrid Agreement Concerning the International Registration of Marks), which was established by WIPO in 1891 as an international system for the registration of trade marks.

The Madrid Protocol currently has 130 member states (as at August 2023).

The Madrid System allows the trade mark owner to apply for trade mark protection at the international level by filing a single application directly with a national trade mark office. This means, by filing an international application in English and paying one set of fees, an Australian trade mark owner may obtain an international registration for protection of the trade mark in another country or several countries.

An international application must be based on the basic trade mark, that is, the existing national trade mark application or registration. Also, the owner of the international application needs to be the same as the owner of the national trade mark. Moreover, the international trade mark needs to be identical to the national trade mark, and the goods or services should be the same or less than the national trade mark.

An international application in Australia may only be filed by the owner of an existing national trade mark if they are an Australian national, or domiciled in Australia, or if they have a real and effective commercial or industrial establishment in Australia.

Persons who live in a country or intergovernmental organisation party to the Madrid Protocol, and persons who carry on business in or have the nationality of such country or intergovernmental organisation, may apply by single application for international registration and protection of their trade mark in one or more of the other member countries or intergovernmental organisations.

A trade mark application through the Madrid System involves a number of steps, including preparation and completion of the international trade mark application, submission of the application to the applicant’s office of origin, formal examination by WIPO, registration by WIPO in the International Register, and substantive examination of the trade mark by the trade mark office of each designated member.

The scope of protection of an international trade mark registration is determined by the domestic laws of each designated Madrid System member state.

Adverse Examination Report

Our Trade Mark Lawyers in Brisbane can assist if you have received an adverse examination report from IP Australia.

We review examination reports and assess whether the issues raised by the Trade Marks Examiner are valid or arguable, and work out what options you may have. We can advise on the prospects of overcoming the Examiner’s concerns or objections and assist with the preparation of a response in an appropriate format.

Common issues in adverse examination reports include that the trade mark is not sufficiently distinctive, or the trade mark is too similar to another trade mark that shares the same or similar goods or services. Other concerns of the examiner can be that the classes of goods or services picked by the applicant are too broad, or the person identified as the owner of the trade mark cannot legally own a trade mark.

Your response to an adverse examination report should be prepared in a way that will optimise your chances of overcoming the objections raised by the examiner, irrespective of whether the objection is that your trade mark conflicts with a trade mark that has already been entered on the trade mark register or your trade mark is too descriptive or inaccurately describes the goods or services that you are offering.

Generally, you have 15 months to respond to an adverse examination report. It may be possible in some circumstances to request an extension.

Depending on the objections in the adverse report, there may be various options to respond, preferably in a manner that will overcome the objections and optimise your chances of achieving registration of your trade mark.

Trade Mark Opposition

Before a trade mark is registered, details of the trade mark are published in the Australian Official Journal of Trade Marks.

A Notice of Intention to Oppose may be filed by third parties who wish to oppose the registration of the trade mark. This notice needs to be filed within two months of the date when acceptance of the trade mark is advertised in the Australian Official Journal of Trade Marks.

The Notice of Intention to Oppose is to be followed by a Statement of Grounds and Particulars within one month of the filing of the Notice of Intention to Oppose. These two documents comprise the notice of opposition.

The two-month period for filing a Notice of Intention to Oppose and the period of one month for filing a Statement of Grounds and Particulars may be extended only in limited circumstances.

Possible grounds for opposing registration of a trade mark include that the applicant is not the owner of the trade mark, the applicant is not intending to use the trade mark, the trade mark contains a false geographical indication, or the trade mark is similar to a trade mark that has acquired a reputation in Australia.

Registration of a trade mark may also be opposed because the trade mark is identical to or very similar to a registered or pending trade mark, by reason of the opponent’s earlier use of a similar trade mark, or on grounds that the application is defective or it was made in bad faith.

If you decide to defend the opposition, you will need to submit a Notice of Intention to Defend within one month of receiving the opponent’s notice of opposition. You should also gather your supporting documents and evidence, and set out your arguments challenging the opponent’s claims that your trade mark is invalid or should not be registered.

If a Notice of Intention to Defend is not filed, then the trade mark application will lapse and the opponent will succeed by default.

If a Notice of Intention to Defend is filed, the opponent will have three months from the filing of the Notice of Intention to Defend to file their Evidence in Support.

After receiving the Evidence in Support, the applicant has three months to provide their Evidence in Answer in response to the opponent’s evidence.

After receiving the Evidence in Answer, the opponent may file Evidence in Reply within two months.

For further information about the various stages of the opposition process including advice on written submissions and assistance with a hearing, it is recommended that you seek professional advice.

If your trade mark registration is opposed and you require assistance to overcome the opposition, or if you wish to commence a trade mark opposition, you are welcome to reach out to us.

We can provide guidance to help you determine your options, and assist in devising a strategy to defend your registration.

Alternatively, if you seek to oppose a trade mark registration, we can advise on the stages of proceedings and assist with the preparation and filing of your documents and evidence.

Trade Mark Infringement

The Trade Marks Act provides that a registered trade mark is infringed if a person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods or services in respect of which the trade mark is registered.

A registered trade mark is also infringed if a person uses, as a trade mark, a sign that is substantially identical with, or deceptively similar to, the trade mark in relation to goods of the same description as that of goods in respect of which the trade mark is registered, or services that are closely related to registered goods, or services of the same description as that of services in respect of which the trade mark is registered, or goods that are closely related to registered services.

However, if the person establishes that that their use of the trade mark is not likely to deceive or cause confusion then they will not be taken to have infringed it.

There are certain circumstances where a person may use a trade mark without infringing the rights of the registered owner.

These include situations where the person uses in good faith the person’s name or the name of the person’s place of business, or the person uses descriptive terms in good faith that indicate the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of goods or services, or the time of production of goods or of the rendering of services.

Similarly, a registered trade mark will not be infringed if the person uses it in good faith to indicate the intended purpose of the goods or services, or the person uses the trade mark for the purposes of comparative advertising, or if the court is of the opinion that the person would obtain registration of the trade mark in their name if they were to apply for it.

The Trade Marks Act further provides that a person who uses a registered trade mark in relation to goods or services that are similar to those in respect of which the trade mark is registered does not infringe the trade mark if the trade mark has been applied to the goods or services with the consent of the registered owner of the trade mark.

There will be no trade mark infringement where the person establishes continuous use, in the course of trade, of their unregistered trade mark although it is substantially identical with, or deceptively similar to, a registered trade mark, from a time before the registration date of the registered trade mark or the first use of the registered trade mark, whichever is the earlier.

Also, there is no infringement of a registered trade mark if, at the time of use, reasonable inquires were made in relation to the trade mark, and a reasonable person would have concluded that the trade mark had been applied to the goods with the consent of the registered owner or an authorised user.

An action for infringement of a registered trade mark may be commenced by the registered owner of the trade mark or, in some instances, an authorised user.

A trade mark infringement action is a civil action that is brought before a court of competent jurisdiction, generally the Federal Circuit and Family Court, or the Federal Court, or another court exercising Federal jurisdiction.

If you have any questions about a matter involving trade mark infringement, and for advice about the legal criteria pertaining to the infringement of registered trade marks, it is recommended that you seek professional advice from a Trade Mark Lawyer.

We will be happy to discuss your options if you need to defend a trade mark infringement action, or if you wish to bring an action for trade mark infringement.

Assignment and Transmission of Trade Marks

Ownership of a registered trade mark, or a trade mark whose registration is being sought, may be passed from one person to another by way of assignment or transmission in accordance with the provisions of the Trade Marks Act.

To ensure that assignments and transmissions of title are entered and up to date in the records of the Trade Marks Office, the Registrar needs to be informed of the change of ownership as soon as it takes place.

If a trade mark is assigned or transmitted, the registered owner of the trade mark, or the person to whom the trade mark is assigned or transmitted, must apply to the Registrar for the assignment or transmission to be recorded in the Register of Trade Marks. The application needs to be in an approved form and be filed together with prescribed documents.

Assignment or transmission of a trade mark may be partial. That is, it may apply to only some of the goods or services in respect of which the trade mark is registered or trade mark registration is sought.

However, assignment or transmission may not be partial in relation to the use of a trade mark in a particular area.

If the assignment of the trade mark is partial, the original owner of the trade mark will retain the trade mark in respect of some of the goods or services, and the assignee will be assigned the trade mark in respect of the other goods or services.