In Australia, a trademark can be refused on several grounds including:
– where the trademark conflicts with another registered trademark;
– where the trademark is misleading or likely to cause confusion;
– where the trademark is scandalous (containing obscenity or offensive material);
– where the trademark is not capable of distinguishing your product or service.
Australia uses the international trademark classification system, just like the EU or the US.
With an affluent population and good business conditions, Australia is an attractive market for expansion of your business.
Registering your trademark in Australia is a vital step in preparing for your entry into the Australian market. If you believe that you may want to reach customers in Australia at any stage in the future, it is worth registering your trademark today.
Australia is also a vital gateway to China, with its close proximity to major Chinese markets and the historic China/Australia free-trade agreement offering unparalleled opportunities to smart entrepreneurs.
Yes, it’s possible to claim priority in your Australian trademark if you have filed an application for a trademark in another country within the past six months. Please have a look at our cartoon about priority claim here.
When deciding whether to file for either a word mark or logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.
On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters.
For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.
The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters.
However, filing for a logo can be more advantageous in some situations.
For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.
Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:
Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).
Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk 
– for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.
In another case, a client wanted to register the mark ESTEEM APPAREL, either the word mark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo 
instead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.
Since the client protected the logo , he now cannot use Esteem Apparel side by side, without the image, in a different font or in ALL CAPITAL letters: ESTEEM APPAREL. On the other hand, if word mark had been filed – ESTEEM APPAREL, he could have used it in ALL CAPITAL LETTERS, in any font, side by side or one word above the other. Logo makes the trademark inflexible and you should not be making even small changes in your use.
In addition, in some cases, one has to file for a logo if the trademark is broken/separated by images or symbols. Please check our article that talks more about it.
Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.
What is the difference between company name, business name, domain name and brand or trademark?
What are different types of company, domain, business or brand names? Let’s get the names straight to avoid confusion.
Example: Microsoft Corporation
Note: one company may own more than one brand and may do business under more than one name
Example: Microsoft
Example: Skype
Example: www.microsoft.com
Example: www.skype.com (Microsoft owns Skype)
Example: MICROSOFT, 
, or a combined mark: 
Example: SKYPE, 
Let’s take another example of a giant retailer Kraft Foods.
Company name: Kraft Foods Inc.
12 of Kraft Foods brands are sold worldwide: Cadbury, Jacobs, Kraft, Maxwell House, Milka, Nabisco, Oreo, Oscar Mayer, Philadelphia, Trident and Tang.
For each brand Kraft Foods has a website: cadbury.co.uk; cadbury.com.au; oreo.com; oscarmayer.com, etc.
Not everyone knows that these 12 famous brands are owned by the same giant! It doesn’t really matter, what matters is that everyone knows where do buy their favorite Cadbury chocolate or Oreo cookies and everyone knows how the Oreo cookies package looks like!
If you simply business incorporate or register a corporate name, it doesn’t mean that the government approved for you to use the name as a trademark.
If we take a US LLC, as an example, every state has its own laws about business names.
You can register your LLC name in Delaware but the business name registration has no impact on the other 49 states.
In plain English, if you register Coolapples LLC in Delaware, another entity may register Coolapples LLC in Indiana. If you plan to expand nationwide or worldwide, trademark registration will provide that protection. A federal US trademark will give you exclusive rights to use your brand name for your products across the US. Likewise, a Canadian or Australian trademark will give you country-wide rights to use your chosen brand in your country and will make it easier for your to sell or license your trademark later.
No use is required for filing or registration in Australia, so long as you have an intention to use the trademark in Australia in the near future. There are no filing bases in Australia just like in the UK and EU.
Trademarks must be used in Australia within 3 years of the date of registration. A trademark that is unused for 3 years or more can be removed from the register.
It’s perfectly legal for you to use your trademark without registration. However, if you are using a trademark that is similar to another name that was adopted before you adopted your trademark, you may be liable for trademark infringement.
To minimize the risk of choosing a trademark that’s similar to another name, you should do a trademark search of the Trademark Office database of the country where you plan to use your brand and of the marketplace (check on Internet for similar names usage).
In different countries trademark opposition process is different.
In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.
A trademark opposition in Brazil may be filed by an interested party within 60 days from the date of its publication.
In Canada, Australia and New Zealand one has to file a trademark opposition within a 2-month period.
A trademark opposition in South Korea may be filed by an interested party within 2 months from the date of its publication.
In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.
A trademark opposition in Japan may be filed by an interested party within two months from the date of its publication. Trademarks are published twice, first time right after filing and second time after registration.
In Germany, publication happens after registration. Opposition period is 3 months.
In the European Union and China, a notice of opposition must be filed within 3 months following the publication.
In India, anyone may oppose registration of an Indian trademark within 4 months after publication.
Trademark Angel is a trademark registration firm with over 23 years of experience. We handle Canadian, US and International trademark requests.
