Looking at registering a Trade Mark? Here’s what you need to know…
Trade Mark examination process
It takes 3-4 months for IP Australia to examine a trade mark application once it has been submitted. This involves an IP Australia examiner checking your application to make sure it contains all the correct information and meet legislative requirements.
If you application fails to meet all requirement, you will be sent a report explaining your applications problems and, possibly, ways to overcome them.
If you trade mark application meets all requirements, your trade mark will be advertised as 'accepted' and open top opposition for 2 months. If not opposed, your trade mark will be registered.
You can't register a mark without using it!
This is called Non-Use and you can have your trade mark struck off the register on either or both of the following grounds:
- The owner of the trade mark had, in good faith, no intention to use, assign to another party, or authorize the use of the trade mark to someone else (s 92(4)(a) Trade Marks Act 1995) or
- The owner of the trade mark has not used the trade mark in good faith for a continuous period of 3 years (s 92(4)(b) Trade Marks Act 1995).
Removing a Trademark from the register
Removal applications are usually based on one of the following claims:
- The owner of the trade mark has not used the trade mark
- The owner of the trade mark has not used the trade mark in good faith
- The owner did not have any intention to use the trade mark
If the owner want the trade mark to stay registered/protected they can contest the claim by opposing the removal application.
Oppositions to the removal applications are generally based on claims that the trade mark has been properly used within the relevant time period.
Think strategically and commercially when registering a trade mark or opposing the registration of a mark. It can save you a lot of time and money!
If you’re thinking of registering a Trade Mark, we invite you to call or email one of S&A Legal’s IP experts. Let us show you how S&A Legal can add value to your business.