Registering a trademark
To secure the name, you need to firstly make sure it is available for use and registration. You can do this by going to the IP Australia website to do a search on the name you intend to trademark.
It’s important to note that IP Australia’s database will only reveal registered trademarks, but not necessarily other problematic trade mark uses. So it may be safer to engage a trademark professional to conduct the search.
If there are no results from the search, you can then apply for the trademark.
As part of the application process, you’ll need to identify which class of goods or services would be provided under the trademark. If you register your trade mark in a class that does not match your business, you may end up without the protection you actually need.
There are 45 classes – 34 for goods and 11 for services. You can search a database of classes and the goods on IP Australia’s website to identify the applicable class.
Choosing a trademark name
Perth-based Principal of Australian boutique IP firm Wrays Marie Wong says a common mistake is businesses using a wholly descriptive name as a trademark.
“A lot of organisations like to use something that describes their business, which is not necessarily a good or strong distinguishing trademark,” Wong says.
“If your mark is wholly descriptive, it’s difficult to distinguish your business from others. An example would be someone in the air-conditioning business who wanted to call themselves WA Air-Conditioning. That trademark’s probably not going to be registered by IP Australia without significant evidence of use.
“IP Australia will likely say, ‘Well, why should you get a monopoly over those two words for an air-conditioning business in WA, when lots of other businesses will want to use the same words to describe their business’."
Intellectual Property (IP)
How do other forms of IP differ from trademarks?
- Patents: A patent is different to a trademark in that it provides a legally exclusive right to make, use or sell an invention that is “new, useful and inventive or innovative”, according to IP Australia. A patented invention can be in the form of a device, substance, method or process.
- Design certification: A design right protects the distinctive appearance of a product.
- Copyright: Copyright covers the expression of an idea (not the idea itself) in visual and audio media, such as printed and online publications, drawings and art, music, film, broadcasts and computer programs.