Choosing a trade mark lawyer is about more than finding someone who can lodge an application with IP Australia.
If you are unsure whether your business name, logo or product name can be registered, which goods and services should be covered, or how an existing trade mark might affect your application, legal advice can help you understand the issues before you apply.
This guide explains what a trade mark lawyer can assist with, how the Australian trade mark process works and what to consider when choosing professional support.
Table of Contents
- What Does a Trade Mark Lawyer Do?
- Business Name vs Trade Mark
- What to Consider Before Applying
- Trade Mark Searches
- Goods, Services and Trade Mark Classes
- How the Australian Trade Mark Application Process Works
- Trade Mark Lawyer vs Trade Marks Attorney
- How to Choose Trade Mark Support
What Does a Trade Mark Lawyer Do?
A trade mark lawyer can advise businesses on legal issues relating to trade marks, brand protection and intellectual property.
This may include:
- reviewing a proposed business or brand name;
- conducting or reviewing trade mark searches;
- advising on potentially similar existing marks;
- identifying relevant goods and services;
- advising on the appropriate trade mark classes;
- preparing and lodging trade mark applications;
- reviewing correspondence from IP Australia;
- advising on objections raised during examination;
- trade mark assignments and ownership changes;
- licensing arrangements; and
- trade mark issues arising in business sales, franchising and commercial agreements.
The scope of work should be clear before you engage a lawyer, particularly if additional work may be required after an application is lodged.
You can read more about Rise Legal’s trade mark and intellectual property services.
Business Name vs Trade Mark
Registering a business name and registering a trade mark are different processes.
A business name is registered with ASIC and identifies the name under which a person or entity carries on business.
Business name registration does not itself give the holder proprietary trade mark rights in that name.
A registered trade mark can provide exclusive rights in Australia in relation to the registered mark and the goods or services covered by the registration.
This means a business can have a registered business name but still need to consider separate trade mark protection for its brand.
What to Consider Before Applying
Before applying for a trade mark, it helps to be clear about exactly what you want to protect.
Consider:
- the word, logo or other sign you want to register;
- who should own the trade mark;
- how the mark is currently being used;
- how you expect to use it in the future;
- the goods or services associated with the mark;
- the countries in which protection may eventually be required; and
- whether similar trade marks already exist.
The application should reflect the commercial use of the brand rather than simply selecting broad categories without considering what the business actually does.
Trade Mark Searches
Searching existing trade marks before applying can help identify potential issues.
IP Australia’s Australian Trade Mark Search can be used to search registered and pending marks.
A useful search may look beyond an identical name and consider:
- similar words;
- alternative spellings;
- similar pronunciation;
- related goods or services;
- logos or visual elements; and
- earlier pending applications.
A preliminary search can provide useful information, but it does not guarantee that IP Australia will accept an application.
The legal significance of an earlier mark depends on factors including the marks themselves and the goods or services involved.
Goods, Services and Trade Mark Classes
A trade mark application must identify the goods and services for which protection is sought.
Australia uses the Nice Classification system, which groups goods and services into classes.
Selecting the appropriate goods and services is important because the registration, if granted, will relate to what is included in the application.
Before applying, consider:
- what the business currently sells or provides;
- related products or services;
- planned future activities; and
- how broadly the application should reasonably be framed.
IP Australia provides classification tools and guidance to assist applicants.
How the Australian Trade Mark Application Process Works
Trade mark applications are lodged with IP Australia.
After lodgement, an examiner assesses the application against the requirements of the Trade Marks Act 1995 (Cth).
The examination may consider matters such as:
- whether the mark is capable of distinguishing the applicant’s goods or services;
- whether similar earlier marks exist;
- the goods and services listed in the application; and
- other requirements under the legislation.
If IP Australia raises an issue, it may issue an examination report setting out the objection or information required.
What Happens After Acceptance?
If an application is accepted, the acceptance is published.
There is then a two-month period during which another party may oppose registration.
If there is no opposition, or an opposition is resolved in the applicant’s favour, the application can proceed towards registration.
Acceptance itself does not mean the trade mark has already been registered.
Trade Mark Lawyer vs Trade Marks Attorney
In Australia, a lawyer and a registered trade marks attorney are not the same professional designation.
A lawyer is admitted to the legal profession and can provide legal advice within their areas of practice.
A registered trade marks attorney is an IP professional registered under the Australian trade marks attorney regulatory system.
The title trade marks attorney is a recognised professional title and registration can be checked through the Trans-Tasman IP Attorneys Board.
Businesses can obtain trade mark assistance from appropriately qualified lawyers or registered trade marks attorneys, depending on the work required.
Rise Legal provides trade mark services through Australian commercial lawyers.
How to Choose Trade Mark Support
When comparing providers, look beyond the headline price and check exactly what is included.
Useful questions include:
- Who will handle my matter?
- Does the service include a trade mark search?
- Will I receive advice about potentially similar marks?
- Does the scope include advice on goods, services and classes?
- Does the fee include preparing and lodging the application?
- Are IP Australia fees included or additional?
- What happens if IP Australia raises an objection?
- Is correspondence after lodgement included?
- What work falls outside the fixed fee?
- How will additional work be quoted?
Comparing the scope of each proposal makes it easier to understand what you are actually paying for.
Fixed-Fee Trade Mark Legal Services
Rise Legal provides fixed-fee proposals for defined trade mark legal work.
The proposal sets out the scope of work and legal fee before work begins.
Government charges and other disbursements should also be identified separately where applicable.
Trade Marks and Your Wider Business
Trade marks can also interact with other commercial arrangements.
For example, trade mark ownership may need to be considered when:
- setting up a company or business structure;
- bringing in shareholders or business partners;
- licensing a brand;
- franchising a business;
- selling a business;
- buying a business; or
- engaging contractors to create branding or other intellectual property.
It is useful to make sure the registered owner of an important trade mark aligns with the intended commercial structure.
See our business contract services and business sales and purchases services for related commercial matters.
How Rise Legal Can Help
Rise Legal assists Australian businesses with trade mark and intellectual property matters.
Our work can include:
- trade mark searches;
- trade mark applications;
- advice on goods and services;
- trade mark ownership and assignments;
- trade mark issues in commercial agreements;
- trade mark issues in business sales and purchases;
- intellectual property provisions in contractor agreements; and
- related commercial intellectual property matters.
Rise Legal provides fixed-fee proposals for defined legal work so the scope and legal fee are agreed before work begins.
Rise Legal does not undertake disputes or litigation.
Contact Rise Legal to request a fixed-fee proposal for your trade mark matter.
Frequently Asked Questions
What does a trade mark lawyer do?
A trade mark lawyer can advise on matters such as trade mark searches, applications, goods and services, IP Australia correspondence, ownership and commercial agreements involving trade marks.
Do I need a lawyer to register a trade mark in Australia?
No.
You can apply directly to IP Australia.
Legal advice may be useful where you are unsure about similar existing marks, ownership, goods and services, or issues raised during examination.
What is the difference between a trade mark lawyer and a trade marks attorney?
A lawyer and a registered trade marks attorney are different professional designations in Australia.
Registered trade marks attorneys are regulated under the trade marks attorney registration system and can be checked through the Trans-Tasman IP Attorneys Board.
Lawyers may also provide trade mark legal services within their areas of practice.
Does registering a business name protect my trade mark?
No.
Business name registration identifies the business operator but does not itself provide proprietary trade mark rights.
Trade mark registration is a separate process through IP Australia.
How do I check whether a trade mark is already registered?
You can use IP Australia’s Australian Trade Mark Search to check registered and pending marks.
A useful search should consider similar marks as well as exact matches.
How long does the trade mark process take?
Timing depends on the application and whether IP Australia raises issues.
IP Australia currently advises that examination of a standard application usually takes around three to four months, while registration cannot occur immediately because statutory timing requirements also apply.
How much does a trade mark lawyer cost?
Fees depend on the scope of work.
Rise Legal provides fixed-fee proposals for defined trade mark legal services so the scope and professional fee are confirmed before work begins.
Article by
Helen Kay, Principal Lawyer, Rise Legal
Helen Kay is the Managing Director and Principal Lawyer at Rise Legal, an Australian commercial and business law firm advising business owners, franchisors and franchisees across Australia. Helen practises in commercial law, franchising, business contracts, business sales and purchases, trade marks and related business law matters.
Disclaimer
This article provides general information only and does not constitute legal advice. It does not take into account your specific circumstances. Laws and regulatory requirements may change, so you should obtain legal advice relevant to your situation before acting on the information contained in this article. Liability limited by a scheme approved under professional standards legislation.
Share this article using the links below:
