White SW Computer Law
Intellectual Property, Information Technology & Telecommunications Lawyers
Melbourne Office - PO Box 452, COLLINS STREET WEST Victoria 8007 Australia
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Telephone: Melbourne Office - +61 3 9629 3709 Sydney Office - +61 2 9233 2600
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Email: wcl@computerlaw.com.au Internet: http://www.computerlaw.com.au

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Trade mark registrations and costs

Our Services

Our lawyers are registered trade mark attorneys and can assist you with any trade mark query that you may have.

Please email us any questions that you may have.

In the meantime, you may find this information useful.

What is a Trade Mark?

A trade mark may be a letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent or a combination of any of these which is used to distinguish the goods or services provided in the course of trade by a person from those provided by another person.

Registering a Trade Mark?

Although it is not compulsory, you may register a trade mark with IP Australia.

By registering your trade mark, you obtain the rights to the exclusive use and/or control of the use of the trade mark for the goods and services for which it is registered.

Who may apply for registration?

You may apply for the registration of a trade mark if you are the owner of a trade mark, and:

  • you use or intend to use the trade mark; or
  • you have authorised or intend to authorise another person to use the trade mark; or
  • you intend to assign the trade mark to a body corporate which intends to use the trade mark

For which classes of goods or services should I apply for registration?

This is an important question.

As a starting point a basic list of classes can be found here.

Further ideas and information can be found at:

If you pick from these lists then you are off to a good start. However, professional advice should always be sought.

Are there any Trade Marks which cannot be registered?

A trade mark cannot be registered if:

  • its use would be likely to cause confusion or deceive by being substantially identical with or deceptively similar to a trade mark which is registered in respect of the same or similar goods and services;
  • its use would be contrary to law;
  • it contains or comprises scandalous material; or
  • it would otherwise not be entitled to protection by law.

Registering a business or a company name does not exclude another party from registering the same name as a trade mark.

If you register a business or company name which is the same as someone else's registered trade mark and

your business or company trades in the same goods and services for which the trade mark was registered,

legal action may be taken against you to prevent you from using the company or business name.

Can you transfer ownership of a trade mark?

Ownership of a trade mark may be transferred but the transfer must be registered.

You may transfer the trade mark for some of the goods and services for which it is registered, but you cannot transfer a trade mark for only a part of Australia.

A trade mark may be owned by more than one person as long as all owners use the trade mark together.

Do you need to need to mark your trade mark?

Although it is not compulsory, owners of registered trade marks should mark them with the symbol: ®.

It is an offence for owners of an unregistered trade mark to represent that they are registered. They can mark them as unregistered by using the symbol: ™ , or if an application has been made it can be marked: ™ application pending.

Can trade marks be protected overseas?

Persons living in, carrying on business in Australia, or having Australian nationality and who have a trade mark application or registration for a trade mark in Australia, may apply by single application for international registration and protection of their trade mark in one, some or all of the other Madrid protocol member countries.

Buyers beware!!

When you purchase a trade mark you should ensure that you get:

  • a warranty of title and an indemnity to back it up; and
  • an undertaking that the assignor will not use a substantially identical or deceptively similar trade mark in respect of, at least, goods and services similar to those which the buyer intends to use the trade mark.

What are the issues to consider when licensing the use of a trade mark?

The following are important issues to consider:

  • Quality control, sampling techniques and rights to terminate if quality controls fail.
  • Control over packaging and advertising
  • Duty to preserve the trade mark and avoid actions which may cause a challenge of the registration of the trade mark
  • Duty to report possible infringements, assisting in proceedings, sharing of costs and damages awards
  • Restrictions on sub-licensing and using similar corporate or business names

Use it or lose it!!

If a registered trade mark is not used someone may apply to have the registration cancelled.

What does it cost to register a trade mark

For international trademarks please email us

More Information

1) the list varies depending upon what time period you are considering
2) this is particularly relevant

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  This website is a guide only and should not be used as a substitute for proper legal advice.
  Readers should make their own enquiries and seek appropriate legal advice.
  For legal advice please email wcl@computerlaw.com.au