Getting legal advice

Is it too late to register my trade mark?

It’s typical as a business owner to have branding you regularly use across your products and services. But, have you protected your branding by registering them as trade marks?

If you haven’t applied to register your trade marks yet, don’t worry – it’s not too late. Importantly, it’s never too late. There may be an upside to having used it (without registration) for a while. 

What is the process?

Once you have applied for your trade marks, every application must be examined by IP Australia.  The Examiner will assess your trade mark application against the requirements specified in the Trade Marks Act 1995 (Act). 

An Examiner will be checking to see if the trade mark can distinguishing your goods or services from those of other persons. They will also check to see whether your trade mark is substantially identical with, or deceptively similar to, another trade mark which already appears on the register in respect of similar goods or services.

Of course, if you have branding which is distinctive, for example, a made-up word, an unusual phrase, or a complicated logo then you are more likely to breeze through the IP Australia examination process towards successful registration.

What if there’s a catch?

However, sometimes the Examiner will raise an obstacle to registration indicating your trade mark application does not meet the threshold requirements of the Act. These obstacles are often in relation to distinguishability and/or a conflict with another registered trade mark as mentioned above.

This is where the use of your trade mark before the date of your application comes in very handy. 

Often, to overcome these obstacles to registration the Examiner will indicate you might be able to overcome the problem if you supply evidence of use of the trade mark.

The purpose of the evidence of use is to:

  • show that your trade mark does distinguish your goods or services from those of other traders, or
  • show you have continuously used your trade mark before the registration date of the other trade mark(s), or
  • show there has been honest concurrent use of your trade mark and the other trade mark(s). 

In each instance, the evidence must be in relation to your goods or services.

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What evidence can be used?

The types of evidence (amongst other information) which are persuasive are:

  • annual turnover figures (in Australian dollars) and, if relevant, individual item cost
  • advertising expenditure (in Australian dollars)
  • advertising evidence showing actual use of the trade mark e.g. television, radio, print and online together with publications/articles mentioning the trade mark
  • where relevant, digital photographs of the evidence
  • indication of market share
  • indication of customer base (who are your major customers in Australia or overseas?)
  • indication of distributors (if the goods are sold via a third party, how much presence does the third party have in the market place?)
  • declarations from persons of standing within the relevant trade
  • consumer surveys and/or questionnaires.

In some instances, evidence of intended use may be submitted. Such evidence must give a very good picture of your commercial plans. You would need to provide, for example, pre-launch market research and market estimates, product launch plans, and information about advertising and sales plans.

What’s next?

Depending on the strength of your evidence, and how it is presented, you will likely be able to overcome IP Australia objections of this nature.

Even if your trade mark closely resembles earlier registered trade marks, is descriptive of your goods or services, contains common surnames or geographic names or is common to the trade (such as serial numbers, letter and number combinations or commonly used slogans), you are still able to prosecute your trade mark through to successful registration. 

In fact, the longer your trade mark has been in use, the more likely it is you will be able to demonstrate it can distinguish your goods or services from those of other traders or indeed has use prior to a similar registered trade mark.   

It is important to note this information does not represent legal advice and you should seek specific legal advice for your circumstances. We recommend Australian Business Lawyers & Advisors to help with your trade mark registration.

This article originally appeared on Australian Business Lawyers & Advisors

Louise Blair

Associate – Australian Business Lawyers & Advisors

Louise is a senior lawyer and a member of the Australian Business Lawyers & Advisors Corporate and Commercial team with a speciality in intellectual property

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