Biztech Lawyers - Trademark FAQs for Startup Businesses
Anthony Bekker

Trademarks registrations are a strategic tool used to protect you business' brands and prevent rivals from using the same or a confusingly similar trademark to promote their own products and services.

In this article we look at some of the most common frequently asked questions about trademarks; and how to protect your valuable IP through registration.

Biztech Lawyers offers trademark registration services in Australia and around the world.

What is a trademark?

A Trade Mark is a 'badge of origin' — and can be a word, name, slogan, logo, picture, letters, numbers, colours, shape, aspects of packaging, sound or smell. It is used to distinguish goods and services of one person from those of others.

Why are trademarks so important?

In substance, a trademark is the personality and individuality of a business. A trademark represents the goodwill of a company and its most significant asset. Therefore, if you aspire to build a compelling and unique brand for your goods and services, ensure it is distinctive.

A trademark can be a valuable marketing tool and can increase in value over time as customers learnt to distinguish the quality of goods and services carrying that trademark. The Apple trademark is an excellent illustration of this. When consumers view the Apple design on products, they immediately form an opinion about the quality and nature of those goods. 

The following are the advantages offered by trademarking:

  • Trademarks help to identify the source and origin of goods and services.
  • Trademarks allow a business to distinguish the quality of goods and services bearing the brand, and serving as a tool to ensure that customers are not duped by deceptively similar brands;
  • Trademarks are a great marketing tool allowing investment in, and promotion of, a Business' brands over time.

What are the benefits of registration of a trademark?

Trademark registration is the most efficient way to protect your brand and is proof of ownership of the trademark. It enables the owners to enforce rights against a third party if they infringe the trademark and use it to their products or services.

Trademark registration also crystalises economic rights which can be sold, licensed to others or exploited as a form of security. Therefore, you can regulate the use of your trademark and stop others from using it. Trademark registration also gives notice to the public of your rights, which can be an efficient deterrence for potential infringers.

A breach of exclusive rights granted by the registration of a trademark is called in infringement. A trademark holder is entitled to sue anyone who uses identical or deceptively similar mark in relation to similar goods and services without authorisation of trademark holder. Various forms of legal action may be taken against the infringers based on the severity of the offence.

What are trademark registration requirements?

A trademark must satisfy the requirements of the Trade Marks Act 1995 in order to be registered, and registration is undertaken via IP Australia or equivalent bodies globally (EU, UK and USA).

Two most basic grounds for the refusal of trademark registration are the absolute grounds and relative grounds.

Absolute grounds relate to the intrinsic aspects of the mark itself in functioning as a badge of origin — these rules enumerate some marks which cannot be registered because of:

  • the incapability of marks to be distinctive - e.g. because they are common or prohibited names
  • common surnames
  • descriptive terms
  • geographical terms
  • terms which are lewd or 'scandalous',
  • terms which are against morality or public order and deceptive for customers in association with the goods and services.

While relative grounds relate to conflicts with other marks and refer to the distinctiveness and likelihood of confusion with other marks, meaning they must not be too similar to other people's marks.

Trademark law doesn't require a trademark to be new and novel, but it should not be similar to other marks use in commerce to likely to confuse.

Usually an opportunity is being given to earlier trademark holders in many countries to oppose the registration of a later conflicting trademark during the registration process. Ordinarily a specific duration is provided to file an opposition after the publication of the trademark application in the official gazette/journal.

How long does it take to register my trademark in Australia?

In Australia trademark registration takes 6-9 months supposing there are no oppositions or objections to the applications. The earliest a trade mark can proceed to registration is seven and a half (7.5) months after the filing date. Sometimes IP Australia accepts trademarks early, so there can be a waiting period between between acceptance and registration.

A typical response to an Australian trademark filing is shown below.  The right hand bar shows the process and typical timeframes —  Lodgement (response within 5 days)  > Examination (reported within 13 weeks) > Acceptance (enters 2 month opposition period) > Registration  

Screen Shot 2020-01-16 at 11.00.08 am

After it is registered trademark applicant will receive a certificate and trademark will be protected for ten years.

Clients often ask us to use the Trademark Headstart process, which allows issues with marks to be identified before a full registration is made, and full fees are payable.

Can business names or domain names be protected as a trademark?

Yes, if you were using your business name or domain name as a trademark not merely as a company name or domain name and registered it as a trademark. Then you may be able to use your business name and domain name as your trademark. It must obviously, meet all of the requirements for trademark registration.

Business names must also be registered with the Australian Securities & Investments Commission (ASIC).

Who is the owner of a trademark in Australia?

Australia follows the first-to-use principle.

This means that IP Australia gives priority to entities who are the 'first to use' a particular trade mark in Australia “as a trade mark” in relation to goods or services. This is distinct from other markets which follow a 'first to file' approach such as China and Japan.

In the event of dispute such entities will need to demonstrate evidence of use.

Does a trademark registered in Australia only protected in Australia?

Yes, a trademark registered in Australia only will be protected in Australia. However, an Australian application or registration provides a basis for foreign protection.

What are the consequences if the trademark is not used after registration?

The trademark can be removed from the Register if after five years of registration it is not used for a continuous three years period.

Can I trademark globally?

Trademark registration in a particular jurisdiction confers only territorial rights — no trademark system provides global protection. The main worldwide system for helping the registration of trademarks in various jurisdictions is generally referred as the "Madrid system".

Madrid arrangement presents a centralised administered mechanism for obtaining trademark registrations in member countries by expanding the protection of an international registration derived by the World Intellectual Property Organization (WIPO). This international registration is based on a trademark registration or application received by a trade mark applicant in his home country.

The main benefit of the Madrid system is that it provides a trademark owner or applicant to get trademark protection in numerous member states by filing one trademark application in one country with single set of fee and a single administrative procedure. Moreover, the area of application of the international registration may be expanded to different member countries at any time. 

Also under the Madrid system, other countries are obliged to accept the filing date of the trademark in Australia as the 'priority date' for registration, provided filing in other markets is done within 6 months of the Australian application via the Madrid process.

What is the duration of protection of registered trademarks?

Trademarks are registered initially in Australia is for a period of ten years. Once ten years passed, registration can be renewed for another ten years, and there's no restriction how many times owner can renew a trademark.

So long as owner keeps filing renewals, together with Declaration of Use forms, can have a trademark as long as you like. Most jurisdictions have a same duration of registration. 

Keeping track of filing and renewal dates is also critically important for your trademark program.

Ant Bekker
Founder | MD

 Ant launched his corporate legal career spending a decade covering ecommerce, technology, finance and litigation at Mallesons Stephen Jaques, followed by in-house stints at global behemoth BT and for the UK competition and consumer regulator (the OFT). An MBA at INSEAD led to a change in direction spending time at a top global strategy consulting business (Booz & Co), and projects in the Netherlands, Singapore and the US.  

Ant then got his feet wet in startups, joining marketing technology business Rokt as inaugural General Counsel and Head of Operations, building both divisions from the ground up. A few funding rounds and 10x growth later, this quickly turned into a global scale-up valued at US$250m+ and 175 staff

Ant founded Biztech Lawyers in 2018.   Biztech Lawyers is a tech-centric law firm.  We serve tech clients and uses an array of legal technology to make legal processes more efficient, allowing clients to grow as painlessly as possible.  Our role is to act as a decision-making partner, rather than a legal-blocker.