Trade Marks – What, Why, When and How Much

One area we get asked about all the time is trade marks and the protection of Intellectual Property for start-ups and small business.

In fact, we get asked so often that we’re running our very first webinar on this very topic!

If you haven’t yet got your place secured – you can register HERE. It’s on 11 October at 11am and will contain information that every entrepreneur and start-up business owner needs to know.

If you can’t make it at that time, just register anyway and we’ll record it and send it to you to afterwards.

We'll be going through a practical session showing you tips and tricks for intellectual property including examples and loads of knowledge we've learnt along the way, advising thousands of start ups. But…in the meantime, here’s the quick ‘what, why, when and how much’ of trade marks…

What is a trade mark?

A trade mark is a specific piece of intellectual property you have that distinguishes your goods and services from another business.

That may be a business name, a product, a tag-line/slap-line/slogan, a logo/image etc.

E.g. for Progressive Legal we have the business name, the logo, product names – “Legal Shield”, “Law On Demand”, “Law-in-a-Box”, and tag-line “Law, for entrepreneurs”.

When should you trade mark?

Ideally…

As soon as you are settled on a business name – trade mark it.

As soon as you’re settled on a logo – trade mark it.

As soon as you’re settled on your tag-line – trade mark it.

How much does it cost?

Because you pay approx. $500 per class of activities that you want protection in, you might consider taking a commercial approach and register, say for instance, the logo and business name together as what’s called a “composite mark”.

If the words are prominent in the logo, then IP Australia will pick them up as well. You won’t be provided as much protection as you would with the individual elements as separate pieces of IP, but you will have some protection and it should stop others from being able to register underneath you.

It can get pretty expensive if you are registering many pieces of IP, especially if your activities fall under a number of classes. If you fall under 3 classes (that’s $1,500 per trade mark).

Mind you, if you only tick one class of activities, then it’s only $500 per application, so you might consider getting more than one application.

Using the ‘headstart’ application

We highly recommend the headstart application as it brings a report back within 5 business days instead of a few months as to whether IP Australia has any issues with the intended Trade Mark.

It just means that you can consider what issues might come up later on, instead of waiting a couple of months before the trade mark is first examined and report issued.

It’s also a confidential process so if you abandon the application (which costs $120 per class to file), no one would be the wiser. If you want to proceed with the mark after it is examined under the headstart, then it’s just a further $80 per class to proceed and if the mark is all clear at that stage. It is unusual for the application to have any issues after that point so you can with much more certainty go ahead and start using or continue to use the mark, unless there is some opposition to the mark by another party.

The normal application costs $120 per class, but you don’t find out whether it is all clear or whether there might be an issue with it for a couple of months. For $80 per class – the headstart is a no-brainer. You do have to do a bit more work to select the activities individually so it takes a bit more time, but you get an idea of its likelihood of success far quicker and it allows you to tweak the name/logo/slogan if there are issues with it, rather than going down the track and either having to rebrand or abandon entirely and go back to the drawing board.

The whole process takes about 7 months from application to final registration so I think the faster things can move initially, the better.

The steps are…

• application,
• examination,
• advertisement in the official journal (2 months),
• and then if all clear, registration.

Do I really need one?

If you have been using a mark for any period of time, you will have accumulated unregistered interests in this piece of intellectual property, just like you have inherent copyright in your words that you publish.

The reason why you should register your IP is that in this day and age more than any time before, words and phrases, domains etc (just like all our resources) are becoming more and more scarce.

It also seems that people and businesses are becoming more knowledgeable in this area and are more willing to take steps against others to protect their interests, both nationally and internationally.

Business names, domain names, social media handles are all being snapped up and trade-marks are being secured left, right and centre.

We have had numerous clients not register their marks early enough in the piece and then competitors have come along and register the marks underneath them and cause havoc and confusion in the market. Having registered rights gives you far greater power to enforce your rights and can be used as either a shield or a sword against competing businesses who sometimes unwittingly are infringing or others that are downright deliberately trying to mess with another competitor. We see it all the time. Best to be first in, best-dressed and not have to deal with that threat.

What if someone has a similar name?

The other issue is that you may have a similar name, logo or tag-line to another business that you’re not currently aware. If this is the case, contact us immediately as there are loads of things to consider and time is of the essence. We can conduct some searches to ascertain who was using the name first, and see whether they have a current trademark application either lodged or approved.

Trade marking is something that most small business owners know they should do, but often it’s a job that goes into the ‘too hard basket’ when questions come up on which classes to choose, how to run searches through IP Australia etc. We’ll answer all these and more during the webinar so make sure you secure your spot now.

>>REGISTER NOW<<