trademarks FAQs

General

What is a trademark?

A trademark is a distinctive sign or indicator used by an individual, business organization or other legal entity to identify that the products or services to consumers with which the trademark appears originate from a unique source, and to distinguish its products or services from those of other entities.

A trademark can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these. It is unique for each trader and gives one the legal right to use, license or sell it within Australia for the goods and services for which it is registered.

What is the difference between a registered mark and a non-registered mark?

A registered mark is approved and entered in the trademark register held by any trademark office (national or regional). Hence, it confers legal rights and becomes incontestable.

An unregistered mark does not have similar benefits, but may receive common law trademark rights. However, it may be difficult to prove ownership and exclusive rights without a registration.

What is the difference between a trademark and a domain name?

A trademark is used to distinguish goods and services from a particular source or of a defined quality, whereas a domain name is an identification label that defines a realm of administrative autonomy, authority, or control in the Internet, based on the domain name system (DNS).

A domain name can be used as a trademark if desired, but should be registered with an ICANN-accredited registrar.

I have a company or business name. Do I still need a trademark?

Yes, in many cases it is wise to have a trademark for your company or business name since registering a trademark heightens the protection it receives, deters others from using your trademark, and increases the remedies should someone infringe upon the trademark.

Registration

Can I register a trademark with Sublime IP?

Yes. In Australia, we have in-house trademark attorney services and can register an Australian trademark for you.

Can I register a design or patent with Sublime IP?

No, our in-house attorneys work with Australian trademarks only. See the IP Australia attorney directory for a list of Australian patent attorneys.

Does Sublime IP register national trademarks outside of Australia?

No. However, you can find a list of international trademark attorney firms at http://www.ipmenu.com/patentattorneylistings.htm.

For an image trademark, how do I submit details?

We would prefer a good quality digital image by e-mail (e.g. TIFF, PDF, JPEG, etc.). Otherwise, a printed copy of the trademark image can be posted to us at the postal address mentioned in our website.

How long does a trademark registration last?

A trademark registration lasts for 10 years in Australia which may be extended for additional periods of 10 years. Failure to use a registered trade mark for a period of three years or more may expose the registration to cancellation on the grounds of non-use.

What types of trade marks would be difficult to register?

The trademarks that indicate the kind, quality, quantity, intended purpose, value, time of production, geographic origin, surnames of goods and services are usually difficult to register.

Registrability

What types of trademarks can Sublime IP register?

Most marks are simple words or two-dimensional images. While traditionally image trademarks were lodged in the register in black and white, it is now possible to have a full colour mark registered.

Some unusual marks also exist, such as for three-dimensional shapes, scents and colours.

Can I register a generic word as a trademark?

Generally this is only possible if the generic word or words are unrelated to the class of goods or services for which you intend to use the trademark. This is because a trademark is, by definition, a sign used commercially to distinguish the goods or services of one trader from those of another in the marketplace.

It is only in quite unusual circumstances that a trademark will be registrable if its main feature is a letter, word, phrase, name, number, device, shape, colour, sound, scent or symbol commonly used by other traders in a similar field. (See Section 41 Trade Marks Act 1995)

What is meant by "capable of distinguishing"

Examiners rely on court cases and legal precedent in deciding whether a trade mark is capable of distinguishing goods and services. Under the Trade Marks Act, if a trademark is not capable of distinguishing the goods or services of the applicant, the trademark must be rejected.

However, one of the main criteria which is considered is whether other traders are likely, in the ordinary course of their business and without improper motive, to need to use the same or similar trade mark in relation to their own goods or services. Traders should not be granted a monopoly in words, expression or logos which other traders may legitimately need to use to describe their own goods or services.

Renewals

How does the trademark renewal process work?

We send a renewal notification by e-mail and post in advance of the expiry date.

It is important you keep us updated to changes in your contact details so that you can receive the renewal notices. Contact updates can be made securely via our Customer Service web site.