Understanding trademark law is crucial if you are a business owner, but it can be confusing. Trademark attorneys specialise in this area, and working with them to register a trade is an affordable and easy process. Trademark laws change over time, and they are familiar with the challenges this may pose to your business and the implications if you trade globally.
Here are some of the common questions they come across with clients:
What is a Trademark class?
You can imagine there is a huge range of businesses or services that want to trademark their offering. To make this process simpler, trademark classes have been defined to create categories that describe the goods and/or services that are trademarked.
When filing an Australian trademark application, there are 45 classes of products and services to select from – some cover goods and other services. The nature of the trademark classes was created by the World Intellectual Property Organisation (WIPO), and most countries use the same class system. It’s merely a way to make the process of trademarking simpler by segregating different goods and services.
As a business owner, it’s important to be clear about what you want protection for, and then find out what class it sits in. That’s because you will only be protected for the specific class you have registered for. If you only register one product or service but have a range of them on offer, you won’t automatically be covered for all of them. You need to specify them, which means one company may require multiple trademarks, across various categories.
It’s not difficult to do. You select the relevant goods or services from a generated pick-list or describe your products/services using your own explanation. In Australia, there isn’t a limit to the number of classes you can include in an application.
How long will my trademark registration last?
Under Australian trademark law, the registration of a trademark lasts for ten years. You do, however, have the right to renew a trademark indefinitely. All you have to do is pay a small renewal fee.
However, it’s worth noting that there is no point in renewing your trademark if you’re not using it in relation to the specific goods or services that it is registered for, or not using it at all. Finding it hard to keep track of your trademarks and when they are up for renewal?
It’s advisable to have a trademark attorney assist you by keeping track of your trademarks and updating them as your business evolves, rather than simply renewing them. Why? It’s possible you need to look into a new trademark application, rather than a renewal.
The other issue is if you don’t use your trademark within at least three years from the date you register it, your rights to it are reduced, and another business can use this fact to attempt to claim the use using a ‘non-use’ argument. You need to keep on top of the status of your mark.
You may find that your business offering changes over time, and your trademark protection should also change to reflect those of your offering over time. You may need to file new trademarks rather than renew your old ones.
Possibly you will have to amend the scope of goods/services of existing trademarks to remove ‘non-used’ goods or services that are vulnerable. In the same way, you may be compelled to change your logo over time.
How long will it take to for my trademark application to be approved?
Technically, a trademark application cannot be approved. Instead, in trademark law, we refer to the period when an application is filed and when it is registered. So, it’s more about processing. In cases that are not complicated, one can expect a trademark to be registered in about seven and a half months.
Some options can speed this up a bit, but Australia is a party to an international agreement. It provides international priority claims for a period of six months. A trademark applicant, therefore, has the right to also claim priority from their application in one country, in another country for six months. They can also backdate it to the day of their original application. Therefore, a trademark can only be registered when the priority claim period has passed.
Applicants are often surprised by the length of time it takes to register a trademark, but it is unavoidable because of the international implications. If you need to get the trademark registered as quickly as possible it’s wise to work with a trademark attorney. They will be familiar with the processes, and also will more than likely have colleagues or partners they work within the countries you are attempting to register your mark in.
Jason is the Marketing Manager at a local advertising company in Australia. He moved to Australia 10 years back for his passion for advertising. Jason recently joined BFA as a volunteer writer and contributes by sharing his valuable experience and knowledge.