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Register trademarks with IP Australia

Without registration, brand protection relies on common-law passing-off — costly to enforce.

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Who must comply

Any business, sole trader, company or trust that trades under a brand, logo or product name it wants to protect, and anyone who represents that a mark is registered. Businesses launching a name should also search the Register so they do not infringe an existing registered mark.

What triggers it

Adopting a new brand, product name or logo, expanding into new classes of goods or services, or using the ® symbol on packaging, websites or marketing.

When due

File before launch where possible (registration takes effect from the filing date). Renew before the registration expires, up to 10 years after filing. Use the mark for the registered goods and services so it cannot be removed for 3 years' non-use.

Evidence required

Trade mark search results before adoption; filing receipt and registration details (number, classes, filing date); renewal dates in a register; evidence of use of the mark for each registered class (dated sales, advertising, packaging); controls so the ® symbol is used only in the registered form.

Max penalty

There is no penalty for not registering, but representing that an unregistered mark is registered, or that a mark is registered for goods or services it is not registered for, is an offence carrying 60 penalty units ($21,840) under Trade Marks Act 1995 s 151. Infringing someone else's registered mark exposes the business to injunctions and damages

Who must comply with this? The applicability test by industry, business structure and size.

Summary

Registering a trade mark under the Trade Marks Act 1995 (Cth) is voluntary, but it is the only way to obtain exclusive rights to use a brand in Australia for the goods and services it is registered for, and to sell or license it as a business asset. Registering a business name with ASIC or a domain name with auDA gives no such exclusivity. IP Australia examines each application against the Act, and a registration takes at least 7 months and lasts up to 10 years before it must be renewed, which can be done indefinitely. The compliance duties sit around the registration: only a registered mark may carry the ® symbol, and a mark that is not used for 3 years can be removed from the Register on a non-use application.

Enforced by

Source legislation

Topics

iptrademarkbranding

Related

Frequently asked questions

Who must comply with trademarks with IP Australia?
Any business, sole trader, company or trust that trades under a brand, logo or product name it wants to protect, and anyone who represents that a mark is registered. Businesses launching a name should also search the Register so they do not infringe an existing registered mark.
What triggers trademarks with IP Australia?
Adopting a new brand, product name or logo, expanding into new classes of goods or services, or using the ® symbol on packaging, websites or marketing.
When is trademarks with IP Australia due?
File before launch where possible (registration takes effect from the filing date). Renew before the registration expires, up to 10 years after filing. Use the mark for the registered goods and services so it cannot be removed for 3 years' non-use.
What is the maximum penalty for trademarks with IP Australia?
There is no penalty for not registering, but representing that an unregistered mark is registered, or that a mark is registered for goods or services it is not registered for, is an offence carrying 60 penalty units ($21,840) under Trade Marks Act 1995 s 151. Infringing someone else's registered mark exposes the business to injunctions and damages
What evidence is required for trademarks with IP Australia?
Trade mark search results before adoption; filing receipt and registration details (number, classes, filing date); renewal dates in a register; evidence of use of the mark for each registered class (dated sales, advertising, packaging); controls so the ® symbol is used only in the registered form.

Source: https://www.ipaustralia.gov.au/trade-marks/what-are-trade-marks. Rules Mate is not a law firm. Always verify against the live regulator source before acting.