Trade Marks
Trade Marks
Trade mark registration gives a ‘sword and shield’ benefit – it allows you to stop other traders from using a similar name or logo to you, and also protects you from most allegations that your trading name or logo infringes someone else’s rights.
The most common misconception in this area concerns registered business names and company names. These do not give you any proprietary rights whatsoever – so they cannot be used to stop other traders from using a similar name or logo to you, and they do not protect you from being sued for infringing someone else’s rights.
But if you are reading this, you probably already know about the benefits of trade marks – you’re more interested in the how and how much.
Searches
The first thing to do is a search – both of any proposed names and logos, to see whether there is anyone with a prior claim.
The main database is the Register of Trade Marks, but searches should also be done of company and business names, and domain names (in case the person hasn’t registered their trade mark).
These searches can all be conducted for free on the Internet from the above links. However, because you can run into trouble with marks which are not just identical but also those that are ‘deceptively similar’, you should use a qualified person to conduct these searches – particularly of the Trade Marks Office database.
More detailed searches can be done using Internet search engines, and industry directories. It is also advisable to check key international trade marks databases (e.g. UK, US, NZ), not only if you have thoughts of expansion, but also because overseas applications can be backdated locally by up to 6 months.
(Please note that there is some lag time anyway with the databases, so a search for availability can never be definitive.)
Application
Assuming there are no sufficiently similar marks (and the mark is not unregistrable for some other reason), the next step is to apply for registration.
This is a fairly straightforward process – it simply requires identification of the correct “class” (i.e. the relevant goods and/or services provided under the trade mark), and a description of these goods / services.
Costs
There is a government fees payable on application, which is $250 per 'class' of goods or services if you use IP Australia’s “auto-pick” service, or $330 per 'class' if you specify your own goods / services.
In terms of professional fees, we charge a fixed price of $490 per trade mark for conducting a search of the Australian Trade Mark Register and providing advice on the likelihood of registrability of your trade mark, and the ability to use it in the face of any potentially conflicting marks. We also offer a more comprehensive search service (including searching the ASIC and ABR registers of business and company names, and basic common law and overseas searches) at a cost of $1,250 per trade mark.
The fixed costs for preparing and filing an application are $490 per trade mark for a single class, and a further $90 for each additional class. We offer a $90 per mark discount for multiple applications filed at the same time. Unlike many firms, we do not charge for reporting on the standard phases of an application (acceptance, advertising, registration), and providing you with your e-copy of the certificate of registration.
There will be additional charges if any correspondence is required with the Trade Marks Office, or if the application is opposed. This is charged at our standard rate of $530 per hour. Preparing and filing a response usually takes between ½ hour – 3 hours in the first instance, unless substantial evidence has to be filed.
If you do not want to wait the three to four months it normally takes before the Trade Marks Office advises whether the mark is to be accepted for registration, we can file an “application for expedited examination” together with supporting statutory declaration for you, at a cost of $340.
Our professional rates (hourly and fixed) are exclusive of GST. No GST is payable by overseas clients.
A full list of our fixed fees for trade marks work can be viewed here.
Extending your Protection Overseas
Trade mark registrations are “territorial”. This means your Australian trade mark registration will only give you protection in Australia. To protect your mark in overseas countries, you must file an application in each of the countries where you want protection.
If you want to do this in more than one country, the best way to do so is to use a process known as the “Madrid Protocol”.
Madrid Protocol
The Madrid Protocol is an international treaty between about 80 countries which allows a single trade mark application to be filed through the World Intellectual Property Office (WIPO), seeking protection in one or more of the countries who have signed the treaty. You need to have a local (Australian) TM application or registration first to do this.
The fees change regularly because of exchange rates, and because they are set by the different government bodies, but the application / registration fee per mark is about A$700, which is the fee payable to WIPO.
On top of this, you pay a fee for each country you designate. This fee is set by each country, and can range from about A$100 up to about A$1,200 to designate the entire EU.
You can add other countries down the track if you wish, without having to pay the base fee again (with the WIPO fee about $400).
Our professional fee for preparing and filing a Madrid Protocol application is $550 + GST per mark, plus $90 for each additional country – which covers standard correspondence with the TM Office through to registration, assuming no problems. (Where countries require an “Intention to Use” form, there is an additional charge of $90 + GST.)
You have up to 6 months to file your overseas application, while still keeping the “priority date” of your base Australian application.
A couple of final notes of caution:
- these prices do not include availability searches in all the countries – as that would often be more expensive than the application fee itself, so we often advise a calculated risk (particularly if you have already selected and are using your trade mark) of proceeding without searching; and
- if the application receives an “adverse report” in an overseas country, most countries then require you to appoint an attorney in that country to respond on your behalf.
Overseas – Direct
If you are only seeking registration in one overseas country, e.g. China, it may be safer (and cheaper) to file through a local TM firm.
For example, In China, the filing cost is about $900, with often similar fees to get the mark through to registration – depending on whether any additional correspondence is required with the China TM Office. Using a US attorney for direct filing, the cost will be about US$1225, whilst in the UK charges the cost will be about A$700.