Trade Marks: A guide to protecting your brand assets

1. General guide to trade mark protection 2. Get creative 3. Brand assets 4. Classification of goods and services 5. Australian trade mark costs 6. New Zealand trade mark costs 7. How long will it take?8. Got plans for world domination?

1. General Guide to Trade mark Protection

Trade Mark Protection

Have a brand or looking to launch one? Let's talk trade mark registration and protection for your brand.

This guide will walk you through some basic information regarding trade mark protection and the registration process.
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But first thing's first — why bother registering a trade mark? To own it.

‍Business, company and domain names are all tools to allow you to conduct a business. But a registered trade mark will provide you with exclusive rights to own, use, license or sell your brand assets — and prevent others from using the same or similar brand assets.

2. Creative Thinking

Get Creative

It pays to be creative when it comes to trade marks because not anything and everything can be registered as a trade mark.

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A trade mark works to identify and differentiate the products and services offered by one business from those of another. So it helps if a trade mark is distinctive and unique.

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Commonly used or descriptive words and expressions can be difficult to register as trade marks because they might be considered to lack "distinctiveness".

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‍Example:

If you're a winemaker and looking to register the word "WINE" as a trade mark, you'll face an uphill battle because other winemakers use, and need to use the word "WINE" to describe their own wine products.

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Where possible, steer clear of words or expressions that:

are commonly used within your industry;

describe your products or services;

are commonly used or popular in general; and
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are geographic or location names.

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A creative trade mark helps to increase your chances of successful trade mark registration. It can also help you enforce your trade mark rights against others in the marketplace.

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One of the other main requirements for trade mark registration is your trade mark cannot be "substantially identical" or "deceptively similar" to any other existing pending or registered trade marks. There are a variety of factors to consider when comparing trade marks including visual, phonetic and even conceptual differences.

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The more creative you can be with your brand name, the better your chances of being able to avoid clashing with any other trade marks.

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3. Brand Assets

Types of Trade Marks

Trade marks can come in all different shapes and sizes including words, logos, taglines, slogan, and even shapes and colours.

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a) Word Marks

Where possible, we advise clients to register their core brand, as a word mark as a first priority. Word marks provide the broadest scope of protection and greatest flexibility of use. Registration of a word mark means you won't be locked into a particular style, font, colour — you’ll have protection for the word or words themselves.

Word mark example: NIKE‍

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b) Logo Marks

If you have a nice logo, you can opt to register this too but it will need to be registered separately.

Logo mark examples:

c) Slogan or Tagline marks

Same goes for other brand assets such as taglines or slogans, they will need to be registered separately.

Tagline example: Just Do It

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Registration of the different types of trade marks used within your business will form a nice portfolio of assets that can be helpful not only from a protection perspective, but also when it comes to licensing, franchising or valuation of your brand and business.

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4. Classification of goods and services

Classes for Registration

Trade marks are registered according to a classification system. There are 45 different classes that cover a range of different products and services.

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The relevant class or classes for registration will be the ones that cover your core business and offerings.

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The costs associated with the trade mark registration process depend on the number of classes you need or want to include in an application.

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We'll work with you to prepare the right specification of goods and services to cover your current business needs and any possible future plans.

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Please note once an application is filed, it's not possible to add additional classes, products or services.

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As your business and brand grows, you may need to consider filing new trade mark applications for additional classes or to cover an expanded range of products and services.

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5. Australian trade mark costs

Australian Trade Marks

Application Costs:

For a single mark covering a single class — AU$1200 + GST.
For additional classes — AU$900 + GST for each additional class.

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Examination Costs:

To review an exam report, and advise on the issues and strategies moving forward — AU$500 + GST.

There will be additional costs to respond to the exam report and issues. These costs will depend on the complexity of the issues raised, but we will advise you of any next steps and associated costs in our review of any exam report.

If the application passes examination without any issues, no costs will be incurred at the examination stage.

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Acceptance Costs:

To finalise the trade mark registration will be AU$350 + GST.

There will be additional costs if the application is opposed by another party. The costs associated with a trade mark opposition depend on the complexity of the potential opposition and strategies involved.

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Once the mark is registered, you’ll enjoy a 10-year period of protection here in Australia. You will have an opportunity to renew the registration (additional costs apply).

The above costs are inclusive of our service charge and official Government Fees (where applicable).

6. NEW zealand trade mark costs

New Zealand Trade Marks

Application Costs:

For a single mark covering a single class — AU$850 + GST.
For additional classes — AU$500 + GST for each additional class.

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Examination Costs:

To review an exam report, and advise on the issues and strategies moving forward — AU$500 + GST.

There will be additional costs to respond to the exam report and issues. These costs will depend on the complexity of the issues raised, but we will advise you of any next steps and associated costs in our review of any exam report.

If the application passes examination without any issues, no costs will be incurred at the examination stage.

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Acceptance Costs:

To finalise the trade mark registration will be AU$350 + GST.
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There will be additional costs if the application is opposed by another party. The costs associated with a trade mark opposition depend on the complexity of the potential opposition and strategies involved.

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Once the mark is registered, you’ll enjoy a 10-year period of protection here in Australia. You will have an opportunity to renew the registration (additional costs apply).

The above costs are inclusive of our service charge and official Government Fees (where applicable).

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7. how long will it take?

Timing

Generally, it takes about 7-8 months for your mark to be registered (provided the trade mark application proceeds smoothly without examination or opposition issues).

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To help speed up the examination of an application, we can request expedited examination at a cost of AU$175 + GST for each application.

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Expedited examination doesn’t speed up the registration of your mark, but it will help your application get examined sooner rather than later.

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Expedited examination can be helpful if you're looking to protect your mark internationally, or continue investing in any branding activities.

8. Got plans for world domination?

International Protection

Trade mark protection is granted on a country by country basis. If you're looking to protect your brand outside of Australia and/or New Zealand, you'll need to consider registration overseas.

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The costs for trade mark protection overseas will vary between countries.

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Please let us know if you have any plans for your brand internationally, we can help advise on the right trade mark protection strategy for your needs, and the associated costs involved.

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