Choosing a new trademark can be like naming your baby: everyone has an opinion, and there’s no single ‘right’ name. In this article, we depart from our usual focus on legal issues, and discuss some of the things that you might bear in mind from a marketing and legal perspective when making your choice.
After trademarks have been accepted for registration by IP Australia, this fact is advertised in the Official Trade Marks Journal. This triggers a two month period known as the ‘Opposition Period’ in which others have a right to oppose to the registration of the trademark. In this article, we give answers to some frequently asked questions about trademark oppositions.
It’s possible to apply to register two or more variations of your trademark in a single application in certain circumstances. This is known as making a ‘series application’. This article describes why you might want to do this, and what constitutes a valid series.
When you file an application to register a trademark, the date on which you do so can have a significant impact on your rights in relation to other trademark users. As a general rule, the earlier that you file your trademark application the better. This is especially true in fast growing industries where trademark applications are being filed frequently.
After you’ve registered your trademark, it’s important to monitor both the market and the official trademarks register as your competitors might still try to use, and even register, the same or similar marks.
Some signs are easier than others to register in relation to particular goods or services. The legal test in Australia is whether the trademarks are ‘adapted to distinguish’ particular goods or services. In the US, trademarks are put into categories that can be arranged along a scale often referred to as the ‘Spectrum of Distinctiveness’.
In an earlier article, we looked at the official Goods and Services Pick-List and some of the advantages that if offers. The ‘Pick-List’ must be used as part of IP Australia’s ‘Trade Mark HeadStart’ application process. In this post, we look at a couple of potential drawbacks associated with using this list.
IP Australia has developed and maintains an extensive ‘pick list’ of goods and services which attempts to describe the entire range of goods and services offered in the Australian economy. In this article, we examine some of the advantages of using this ‘pick list’ to draft trademark applications.
When submitting a trademark application, every applicant is asked to nominate one or more ‘classes’ and then ‘list the goods and/or services for which you are seeking registration’. Trademark classes are not necessarily the easiest concept to grasp, and it’s worth looking at how a trademark application is examined in order to understand them.
In Part 1 and Part 2 of this series, we looked at the use of the ® symbol, and pointed out some of the main ways in which people use it incorrectly. In this final part, we look at one final way in which the Trade Marks Act can be breached unwittingly.
In Part 1 of this three part series, we examined instances of when you can and when you can’t use the ® symbol in relation to trademarks. In this post, we look at a specific instance which can prove to be a trap for the unwary.
The ® symbol is commonly associated with trademarks, and - while use of the symbol does have legal implications - a surprisingly large number of people don’t actually understand what it means. This is the first of two articles in which this symbol is discussed.
If you register a trademark, you have the exclusive right to use that mark in relation to the goods and services which are listed in the registration. In this article we consider the extent of that exclusivity in geographical terms.
Although there is no requirement to register your trademarks, there are a number of distinct advantages associated with registering your trademark rather than simply relying on common law or unregistered rights. In this article, we discuss these advantages.
There’s no legal requirement to register any trademark that you use. In other words, you won’t be breaching any laws by failing to register your trademark before you use this. However you should be aware that choosing not to register your trademark can have disadvantages.
Many people mistakenly believe that applying to register a trademark is an administrative process like registering a company or applying for a permit, and so choose to do it themselves instead of engaging a trademark professional. In this article we discuss why you shouldn’t underestimate the complexity of this task.
Registering a trademark involves a number of steps from choosing the mark, searching, filing your application and seeing it through to registration. This article sets out what’s involved in these steps and what we at Epiphany Law can do to help you.
Trademarks perform a specific branding function: they distinguish the goods or services of one trader from those provided by its competitors. In this article, we look at the role played by trademarks, and provide some real world examples of different types of trademarks which have been registered in Australia.
When conducting trademark searches, you might decide to look only for names that are ‘exact matches’ of the one that you're considering using. Alternatively, you might choose to cast your net wider, and look for different names that are similar but not identical to your own. In this article, we consider the limitations of looking only for exact matches.
When you’re looking for something, it seems obvious to say that you need to look in all the right places. The same is true of trademark searches, where (whether you’re searching for yourself, or are paying someone else to search for you) you need to make sure that all of the correct databases are being searched. You should never be afraid to ask questions about the extent of paid searches, and this article gives you an idea of what questions to ask.
Registering a trademark is by far the easiest way to protect your brand. However, it is possible to acquire certain unregistered rights by merely using a brand in the market place over time. These rights include the right to prevent others from registering ‘substantially identical’ or ‘deceptively similar’ marks, and a right to sue unregistered trademark owners for something called ‘passing off’.
Before conducting any trademark search, it’s important to know the reason for your search. It’s only then that you’ll be able to work out whether the particular searches that you’re planning to do will be adequate for your needs. This post identifies the two main reasons for searching, and what kinds of searches you should be thinking about doing.
At the start of a new business venture or before the launch of a new product or brand, business owners sometimes question the need for a trademark search. Well, there are a few good reasons not to skip that step, and we summarise them in this article.
If you've filed a standard trademark application, it will automatically come up for examination by an IP Australia Trademark Examiner, usually within two to four months of filing (unless expedited). What happens next can be difficult to predict, but in this article we’ll try to give you a sense of how things could go.
It might sound obvious, but trademark searches aren’t worth anything to you unless you can use the results. One important thing to ask before you order a trademark search from anybody is this: ‘What will I be given when the search has been completed?’