Trade Marks

A trade mark is a distinctive sign used to differentiate the goods and/or services of a trader from those of others. In Australia and New Zealand, trade marks can take various forms, including:

Word Marks: Specific words or phrases.
Figurative Marks: Logos or symbols.
Sound Marks: Unique sounds associated with a brand.
Scent Marks: Distinctive smells that identify the brand.
Colour Marks: Specific colours used in branding.
Movement Marks: Moving images or sequences.
Shape Marks: Distinctive product shapes or packaging.

Registering a trade mark is crucial for several reasons:

• – Market Exclusivity: A registered trade mark grants you exclusive rights to use the mark for the registered goods or services, enhancing brand recognition and loyalty.
• – Shield and a Sword: It gives you the legal right to prevent others from using an identical or confusingly similar mark and it also provides a full defence to allegations of trade mark infringement.
• – Business Valuation: Trade mark registration can significantly boost your business’s value. Companies with registered trade marks are more attractive to investors and more likely to secure funding. Having a protected brand demonstrates a commitment to safeguarding your intellectual property, which is a key factor for investors.
• – Brand Strength: Protecting your trade mark helps build a strong brand identity, fostering consumer trust and supporting long-term business success.
• – Enhanced Negotiation Power: Owning a registered trade mark can provide leverage in business negotiations, partnerships, and collaborations, as it is a valued intangible asset that adds credibility and value to your business.
• – Licensing Opportunities: Registered trade marks can be licensed to other businesses, creating additional revenue streams without diluting your brand strength.
• – Asset for Financing: Trade marks can be used as collateral for securing loans or other financial backing, providing a means to access capital for business growth.
• – Consumer Trust and Loyalty: A well-protected trade mark can enhance consumer confidence in your brand, leading to increased customer loyalty and advocacy.
• – Global Expansion: A registered trade mark in Australia and New Zealand can facilitate international trade mark registrations, making it easier to expand your business globally and protect your brand in multiple markets.

Securing your trade mark is an essential step in protecting your brand and ensuring its growth and success in the competitive market.

Ensuring your brand’s success begins with a crucial step: conducting a thorough trade mark search and clearance. The Australian courts have stressed the importance of this process in demonstrating honesty of adoption of a trade mark. Without establishing honesty of adoption, your trade mark registration or application could swiftly fall apart. It could also undermine any available defence to trade mark infringement.

Warning: Proceeding without a professional trade mark search can lead to filing errors that waste your fees and expose you to legal risks.

At Halfords IP, we offer various trade mark searching options:

1. Identical or Knock-Out Search: This search identifies if your mark is clearly not available for use and registration. It is limited to searches of the Trade Marks Register for identical marks in respect of the same goods and/or services. We offer this search for FREE.
2. Register Search: This search digs deeper into the Australian trade mark database, uncovering marks that are substantially identical or deceptively similar. It helps you avoid conflicts that could derail your branding efforts. The cost of undertaking this search will depend on the complexity of the mark and the number of classes to be searched.
3. Common Law Search: This search checks for identical or deceptively similar unregistered marks that are in use, but not formally registered. This is crucial as unregistered marks can still pose legal risks of passing off and under the Australian Consumer Law, potentially leading to disputes even if your mark is registered.
4. Full Availability Search: This is the gold standard of trade mark searches. In addition to searching the Register and searching unregistered marks, it also evaluates whether your trade mark meets all registration requirements and identifies any unregistered marks that could cause problems.

Conducting these searches is not just about avoiding costly rebranding and legal battles; it’s about safeguarding your brand’s future. By performing a trade mark search, you can identify potential problems early, allowing you to make necessary changes before filing your application. This not only saves time and money but also increases the chances of your trade mark being successfully registered. It also demonstrates your diligence and strengthens your position in case of any disputes.

Don’t leave your brand’s protection to chance. Contact Halfords IP.

While it is possible to conduct your own trademark search using publicly available databases, the benefits of a professional search far outweigh the potential risks and pitfalls of a self-search.

1. Expertise and Experience: Conducting a thorough trade mark search requires an in-depth understanding of trade mark law and the nuances of interpreting search results. Professional trade mark attorneys and search specialists possess years of experience in identifying potential conflicts and understanding the subtleties of trade mark databases. They know what to look for, how to evaluate the risk of potential conflicts, and can interpret the results with a keen eye for detail.
2. Comprehensive and Accurate Searches: While the Trade Marks Office provides a publicly available database for self-searches, the complexity of trademark law in Australia means that conducting an accurate search requires more than just access to a database. Professionals use advanced search techniques and proprietary tools that go beyond the capabilities of public databases. They can uncover potential issues that might be missed in a self-search, such as similar marks, phonetic similarities, and related goods and services.
3. Avoiding Common Pitfalls: Self-searches often lead to false positives or negatives due to a lack of understanding of trademark law and search techniques. This can result in believing a trademark is available when it is not, leading to the filing of an application and receiving an adverse report from the Trade Marks Office. A professional search can identify these issues beforehand, helping to avoid unnecessary delays and additional costs.
4. Time and Cost Efficiency: The Trade Marks Office takes approximately 4 to 6 months to examine applications. If an adverse report is issued, it can significantly delay the registration process. By having a professional search conducted before filing an application, potential conflicts can be identified and addressed early, saving both time and money. This proactive approach reduces the risk of receiving adverse reports and helps ensure a smoother and faster registration process.
5. Tailored Advice and Solutions: A professional search not only identifies potential conflicts but also provides easy-to-follow advice on how to avoid or overcome these problems. Trademark attorneys can suggest alternative strategies, such as modifying the mark, negotiating with existing trademark owners, or exploring other options to ensure successful registration. This tailored advice is invaluable in navigating the complexities of trademark law and maximizing the chances of successful registration.
6. Peace of Mind: Engaging a professional for your trademark search provides peace of mind. Knowing that experts are handling the search and analysis means you can be confident in the accuracy and thoroughness of the results. This allows you to focus on other aspects of your business, knowing that your trademark application is in capable hands.

Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc.
©2021 Halfords IP

A registered trade mark offers protection for a period of 10 years, with the option of renewing it indefinitely every 10 years.

Trade marks are territorial, meaning protection is only granted in the country where registration is obtained. To extend protection internationally, you can file a national application in the country of interest or you can file an international application under the Madrid Protocol, based on your Australian or New Zealand home application.

You can also priority from your first application within 6 months, which allows you to maintain the original filing date in multiple countries.

Once the search comes clear, or if proceeding without a search, the next step is preparing and filing the trade mark application with the Australian Trade Marks Office. To lodge a trade mark application, we need the following:

• – A clear representation of the trade mark. When filing an application through us, we will work with you to identify what elements of your brand should be protected to ensure the broadest possible coverage and protection.
• – A list of the goods and services for which protection is sought. The World Intellectual Property Organisation divides all goods and services into 45 classes. For instance, shoes fall in class 25 whereas computer programs fall in class 9. Once we receive a description of the goods and/or services, we will be able to identify all the relevant classes for protection.
• – The full name and address of the applicant and, if applicable, the Australian Company Number (ACN).
• – Convention priority details, if applicable.

After filing, your application will be assigned to trade mark examiner at the Trade Marks Office. The Australian Office usually examines applications within 4 to 5 months and the New Zealand Office usually examines applications in 2 to 3 weeks. Examination in Australia can be expedited, which will reduce the examination timeframe to 4 to 6 weeks.

The Examining Attorney will check for any potential issues, including conflicts with existing trademarks and compliance with trade mark laws and regulations, and issue an adverse examination report if there are any administrative or substantive issues with your application. A Trade Mark will not be registered if:

• – it is likely to be needed by other traders in the ordinary course of trade, e.g. descriptive words or symbols, surnames, place names;
• – the Trade Mark is substantially identical to one already used in Australia by another owner, for the same goods/services;
• – the Trade Mark is confusingly similar to an earlier registered mark or pending application by a different owner, for goods or services closely related to those of the application; or,
• – use of the Trade Mark is likely to cause confusion, in view of established use of a similar mark by another owner.

It is possible to overcome an adverse report by filing written arguments, amending the application, providing a letter of consent or some other similar agreement from the prior owner, remove prior cited marks as objections, and/or providing evidence supporting the registrability of your trade mark.

Failure to respond to an adverse report before the deadline will result in the application lapsing. In such cases, you will need to take special steps to revive the application or start the process anew.

In Australia, Applicants have 15 months from the issuance of the report to obtain acceptance of the application. In New Zealand, Applicants have 12 months from the issuance of the report to respond to the objections.

After a trade mark application has been accepted, it is advertised in the official journal to allow third-parties an opportunity to oppose the application. The opposition period is 2-months in Australia and 3-months in New Zealand. Most trade marks are not opposed and after the expiry of the opposition period, the Certificate of Registration will issue.

The earliest the Office will issue a Certificate of Registration is typically around 7 to 8 months from the filing date. This allows for the mandatory six-month period for international designations claiming priority, as well as the examination process, addressing any objections, and the advertisement period for potential opposition. Once these steps are completed and no oppositions are filed, the Certificate of Registration will be issued.

What is a trade mark opposition?

A trade mark opposition is a formal objection to the registration of a trade mark. Registration can be opposed on a number of grounds, including similarity to a prior mark, lack of distinctiveness, bad faith, applicant is not the owner of the mark.

The trade mark opposition process is highly time-sensitive, following a strict time line. The opposition must be initiated during the advertisement period, which is:

• – 2-months in Australia. This period is non-extendible save for in very limited circumstances;
• – 3-months in New Zealand. Limited extensions of time can be requested.

Halfords IP is a trusted advisor to some of Australia’s and New Zealand’s most well-known brands in contentious matters. We have a stellar record of success in trade mark oppositions, non-use proceedings and cancellation and revocation actions.

Notice of Opposition – What is it and How to file it?

The Notice of Opposition is the first step in opposing a trade mark, and it must be meticulously crafted. The New Zealand Trade Marks Office frowns upon Notices that include meritless grounds.

In Australia, the Notice of Opposition is divided into:

• – Notice of Intention to Oppose, which as the name suggests indicates the Opponent’s intention to oppose the application;
• – Statement of Grounds and Particulars. This document needs to specify the grounds of opposition and provide brief particulars. Since amendments can be challenging, it is crucial to get the grounds and particulars right the first time.

Once the Notice of Opposition is complete and deemed adequate by the Trade Marks Office, the opposition formally commences.

Counterstatement and Notice of Intention to Oppose

In New Zealand, the trade mark applicant has 2-months from the receipt of the Notice of Opposition to file a Counterstatement if it wishes to defend its application. The counterstatement comprises of the applicant’s pleadings and must indicate whether it accepts or denies the assertions in the Notice of Opposition,

In Australia, the trade mark applicant has 1-month from the receipt of the Statement of Grounds and Particulars to file its Notice of Intention to Defend if it wishes to defend its application. The Notice is a much simpler form than a Counterstatement in New Zealand.

Evidence in Support

Within 3 months from filing the Statement of Grounds and Particulars, the Opponent then submits their Evidence in Support of the Opposition. Evidence in Support of the Opposition typically incorporates comments from one or more expert in the field of the invention, prepared in the form of a Declaration, Statutory Declaration or Affidavit, outlining their opinion, as a person skilled in the technical field of the invention, as to why they believe that the invention may not be new, inventive, or otherwise patentable, etc. in light of the disclosures of the documents identified in the Statement of Grounds and Particulars.

Evidence in Answer
The Applicant then has a period of 3 months within which to file their Evidence in Answer. Evidence in Answer is typically also in the form of a Declaration, Statutory Declaration or Affidavit made by a person familiar with the Applicant’s business. It seeks to contest the grounds, particulars and evidence in support which has been filed by the Opponent.

Evidence in Reply
Finally, the Opponent has a period of 2 months within which to file any Evidence in Reply. Evidence in reply is typically limited to responding to the Patent Applicant’s Evidence in Answer, and again is typically in the form of a Declaration, Statutory Declaration or Affidavit made by the Opponent’s expert.

Opposition Hearing
A Hearing will then be scheduled by the Australian Trade Marks Office. The Hearing may be held orally and/or by written submissions, at which a Hearing Officer will consider this submissions made and the evidence received by both the Opponent and the Applicant.

The Australian Trade Marks Office hearing process is a reasonably informal process, and each party (typically represented by their trade mark attorney) is given an opportunity to present and argue their case against the case of the other party.

Decision
A formal Decision and a statement of reasons is typically provided to both parties within a few months of the hearing. The Decision may conclude that the Opponent is entirely successful and that the application should therefore not progress to grant, or, that the Opponent is entirely unsuccessful and that the application should be granted in its present form.

Otherwise, in the event that the Opponent is at least partly successful, the Applicant may be given an opportunity to amend their specification to overcome any issues identified as problematic, so that the Application can then progress to grant in a modified form.

Appeal
If either party disagrees with the Decision, an Appeal may be filed to the Federal Court of Australia.

Whether you are filing an opposition or defending your trade mark, engaging a trade mark attorney can significantly enhance your success rate. At Halfords IP, we provide comprehensive support:

• – For Opponents, we help you strategize and craft a robust Notice of Opposition, ensuring it is persuasive and well-grounded in legal principles. We also assist in gathering and presenting compelling evidence to support your case.
• – For Applicants/defenders, we guide you through responding to oppositions, ensuring your responses are timely and strategically sound. We help compile evidence that reinforces the legitimacy and distinctiveness of your trade mark.

Engaging Halfords IP ensures you have expert guidance every step of the way, whether you’re opposing a trade mark or defending your own. Our expertise helps you stay a step ahead, safeguarding your brand effectively.

WARNING – IP Australia will not notify you if a similar trade mark is filed. As a trade mark owner, it is your responsibility to monitor for potential infringements. Halfords IP provides cost effective monitoring services that will allow to take action against any new applications of concern.

Removal proceedings are legal actions taken to remove a trade mark from the register due to lack of use or lack of intention to use. In New Zealand, they are referred to as revocation proceedings.

In both Australia and New Zealand, a trade mark can be removed on the grounds of non-use if it has not been used for a continuous period of three years. This ensures that the trade mark register remains current and that unused trade marks do not block others from registering similar marks.

The process begins with filing a non-use removal/revocation application with the Trade Marks Office. In New Zealand, the revocation application needs to date of requested revocation is very important and needs to be carefully selected.

The trade mark owner is notified of the removal application and it is also advertised in the official journal for opposition purposes. The trade mark owner must then oppose the removal application and file evidence of use or reasons for non-use. If the owner fails to provide satisfactory evidence, the trade mark may be removed from the register.

The Notice of Opposition is the first step in opposing a removal application, and it must be meticulously crafted.

In New Zealand, the owner or licensee of the trade mark registration may oppose the application by filing both:

(a) a counterstatement; and

(b) evidence of either use of the trade mark or evidence of special circumstances explaining the non-use of the trade mark.

If the owner or licensee does not file both its counterstatement and evidence by the opposition deadline, the owner or licensee will take no further part in the proceeding and the Commissioner will determine the application on the documents filed by the removal applicant only.

In Australia, the Notice of Opposition is divided into:

• – Notice of Intention to Oppose, which as the name suggests indicates the Opponent’s intention to oppose the application;
• – Statement of Grounds and Particulars. This document needs to specify the grounds of opposition and provide brief particulars. Since amendments can be challenging, it is crucial to get the grounds and particulars right the first time.

Once the Notice of Opposition is complete and deemed adequate by the Trade Marks Office, the opposition formally commences

Whether you are seeking to remove a competitor’s unused trade mark or defending your own, the process requires strategic planning and meticulous preparation. Engaging a trade mark attorney significantly enhances your chances of success in non-use removal or revocation proceedings. At Halfords IP, we provide comprehensive support through out the process – helping you gather and present compelling evidence of use or non-use with precision and expertise, crafting persuasive arguments, and navigating the procedural complexities.

For assistance with non-use removal or revocation proceedings in Australia, New Zealand, or internationally, contact our experienced attorneys at Halfords IP.

In Australia, a trade mark registration can be revoked if it is determined that the registration should not have been granted initially. This holds true regardless of the trade mark owner having acted in good faith, fulfilling all necessary requirements, and overcoming the examination and opposition phases without issues.

The Registrar has the authority to revoke a trade mark registration within 12 months of its registration date. This power is exercised with caution and is primarily intended to correct errors or omissions made by the Registrar during the registration process. It is not meant to replace opposition or revocation proceedings initiated by third parties. However, the scope of this power is broad and can address any grounds that would have been relevant during the initial examination, including conflicts with prior trade marks.

In revocation proceedings, it is crucial for the trade mark owner to present comprehensive evidence addressing various factors that the Registrar must consider. This includes demonstrating honest concurrent use, providing evidence that confusion is unlikely, and showing potential prejudice to the business if the trade mark were to be revoked.

In New Zealand, an aggrieved person can apply for a declaration of invalidity of a trade mark registration, either for the whole registration or part of it. The application must clearly outline the grounds for invalidity, which can include:

• – The registered proprietor is not entitled to claim ownership of the mark;
• – The use of the mark is likely to deceive or cause confusion;
• – The use of the mark is contrary to New Zealand law or would be disentitled to protection in any court;
• – The use of the mark would likely offend a significant section of the community, including Maori;
• – The trade mark application was made in bad faith; and
• – The trade mark is non-distinctive.

As the registration of a trade mark is considered prima facie evidence of its validity, the burden of proof in invalidity cases rests heavily on the party challenging the registration. This makes invalidity proceedings particularly complex and nuanced. Given the intricate nature of these proceedings, it is vital to have an experienced attorney handle them.

Halfords IP offers expert guidance to navigate these complex proceedings, ensuring that all necessary evidence is effectively compiled and presented to protect your trade mark registration. Contact us to learn how we can assist in safeguarding your brand.

Safeguarding your trade mark is crucial to maintaining your brand’s integrity and market position. Halfords IP is recognized globally for its expertise in delivering strategic, bespoke advice tailored to your specific business needs.

We offer a wide range of trade mark enforcement services, from diligent monitoring and identifying potential infringements to preparing and responding to cease and desist letters. Our expertise extends to formulating robust enforcement strategies, engaging in proactive negotiations, and assisting clients through litigation. Our client-focused approach ensures that our actions align with your business values and goals.

In jurisdictions like Australia and New Zealand, unregistered trade marks can still be protected based on reputation. Significant use of a trade mark can create enforceable rights even without registration. However, common law protection has limitations. Court proceedings can be lengthy and unpredictable, and reputation-based rights are often confined to specific geographic areas. Furthermore, many countries prioritize registered marks over use-based claims.
We assist clients in defending and protecting their unregistered trade marks, leveraging our deep understanding of reputation-based rights to safeguard your brand effectively.

Receiving a cease and desist letter can be daunting. Our experts at Halfords IP will assess your situation, identify potential risks, and provide strategic advice to mitigate exposure. We aim to resolve disputes favourably through negotiation or, if necessary, robustly defend your position. Additionally, we help develop proactive risk management strategies to prevent future allegations.

In today’s digital landscape, online presence is vital. Trade mark infringements in the digital space, including social media, and e-commerce platforms, require specialized expertise. We offer services to monitor and address online infringements, ensuring your brand’s integrity is maintained across all digital platforms.

At Halfords IP, we understand that each business is unique. Our approach to trade mark protection is tailored to meet your specific needs, providing you with practical and effective solutions. Whether you need assistance with enforcement strategies, defending against allegations, or navigating the complexities of online trade mark issues, our team is here to support you.

Contact us today to learn more about how we can protect your trade marks and ensure your business’s continued success.

Trade mark enforcement goes beyond monitoring and litigation; it extends to proactive measures like customs seizure notices. At Halfords IP, we provide services to help protect your intellectual property rights at the border so that counterfeit or infringing goods can be intercepted before they reach the market.

In Australia, trade mark owners can lodge a Notice of Objection with the Australian Border Force. Similarly, in New Zealand, trade mark owners can file a Notice of Objection with New Zealand Customs. Both these notices empower customs officers to seize imported goods that infringe your registered trade mark. If the border forces identify goods that potentially infringe your trade mark, they will seize them and notify us. We can obtain full details of the importer and often of the supplier of the infringing products from the border forces. This information can be invaluable for tracking leaks or issues within the supply chain. If the seized goods are not claimed, they will be deemed forfeited and will be destroyed. Should the importer file a claim for the release of the seized goods, we can provide you with strategic advice on the available options. In our experience, it is not common for importers to seek release of they goods unless they are genuine goods,

Notices of Objection are a highly effective way of stopping counterfeit goods from entering the Australian market, maintaining the value and reputation of your brand, and addressing infringement proactively, potentially reducing the need for costly litigation. Our team has extensive experience in:

• – Preparing and filing Notices of Objection with customs authorities in both Australia and New Zealand;
• – Providing continuous monitoring and updates on the status of your notices and any seized goods;
• – If goods are seized, providing expert legal advice and representation to confirm and take appropriate action;
• – Providing tailored strategies to enhance your brand protection efforts and prevent future infringements; and
• – Training border forces on the nuances of a brand owner’s trade marks and goods.

By partnering with Halfords IP, you can be confident that your intellectual property is safeguarded against counterfeit and infringing goods, ensuring your brand’s integrity and value are maintained. Contact us today to learn more about how we can assist you with customs seizure notices and other trade mark enforcement strategies.

Typical steps, timeline, and costs etc. outlined as a guide only, and may vary depending on complexity, IP strategy, etc.
©2021 Halfords IP

An Australian Trade Mark registration only protects you in Australia.

If you wish to protect your Trade Mark overseas, you will need to file separate overseas Trade Mark applications in the countries of interest or you may be able to file an international application designating countries that have signed up to an international agreement.

Australia has an international agreement allowing Australian Trade Mark applicants to file Trade Mark applications within the first 6 months of the initial Australian Trade Mark application, while retaining the original priority date of the Australian case.

Each overseas application will go through a separate examination process according to the Trade Mark laws of the relevant country, before being registered.

Trade Marks can be renewed indefinitely, provided the mark is in use, and subject to the payment of periodic renewal fees, typically every 10 years.

A Trade Mark can be owned by an individual or a company who is using or intending to use the Trade Mark. The applicant cant be a business name or trading name, but should be the owner of the business registration.

Yes…unlike Patents and Designs, a Trade Mark can be filed at any stage. For start-ups, it is often prudent to initially focus on protecting your inventions first, and then later look at Trade Mark protection.

Australian Trade Marks are registered for a period of 10 years from the application date, and are then renewable for 10 yearly periods upon payment of a renewal fee.

You must continue to use your Trade Mark, otherwise it is vulnerable to be removed from the Trade Marks register.

An Australian Trade Mark covers Australia only. If you wish to protect your Trade Mark in other countries, you need to file applications in the countries of interest.

Australia has international agreements allowing Australian Trade Mark applicants to file Trade Mark applications in most foreign countries within 6 months of the first Australian Trade Mark application while retaining the original priority date.

Registering a business name is not the same as registered a Trade Mark. It gives you no right of action against others.

In order to trade legally in Australia under a name other than the actual name of a legal person (an individual or a company) a “business name”, must be registered. A search of registered business names throughout Australia can be made with the Australian Securities and Investments Commission (ASIC). To gain registration, a search is conducted to determine whether the name is the same as, or confusingly similar to, an existing registered business name in the same state or territory or the name of a registered company.

The registration system simply enables the public to identify the person(s) behind the business name.

The registration of a business name provides no rights to the name as a Trade Mark.