1. The Madrid Agreement
2. The Madrid Protocol

The system is managed by the World Intellectual Property Organisation (WIPO) which is based inGeneva.

By registering under the Madrid System, will alleviate the time and expense in applying for individual trademark registrations in different countries.  The Madrid Agreement is one application and one fee for all the countries under its wing.  Definitely a better way of managing international trademarks, provided of course that the country you wish to register in comes under the Madrid Agreement.

The countries listed under the Madrid System are as follows:

• Albania
• Antigua & Barbuda
• Armenia
• Australia
• Austria
• Azerbaijan
• Bahrain
• Belarus
• Belgium
• Bhutan
• Bosnia and Herzegovina
• Botswana
• Bulgaria
• China
• Croatia
• CubaCyprus
• CzechRepublic
• Denmark
• Estonia
• European Union (via Community Trade Mark)
• Finland
• France
• Georgia
• Germany
• Ghana
• Greece
• Hungary
• Iceland
• Iran
• Ireland
• Italy
• Japan
• Kenya
• Korea(North)
• Korea(South)
• Kyrgyzstan
• Latvia
• Lesotho
• Liechtenstein
• Lithuania
• Luxembourg
• Macedonia
• Madagascar
• Moldova
• Monaco
• Mongolia
• Morocco
• Mozambique
• Namibia
• Netherland
• Norway
• Poland
• Portugal
• Romania
• Russian Federation
• Sao Tome and Principe
• Serbia&Montenegro
• Sierra Leone
• Singapore
• Slovakia
• Slovenia
• Spain
• Swaziland
• Sweden
• Switzerland
• Syria
• Turkey
• Turkmenistan
• Ukraine
• United Kingdom
• United States of America
• Vietnam
• Zambia

If your countries are not listed above, it will become an individual application for each of those countries.  Before registering overseas, you will need to have your trademark registered in Australia first.

The applications will be filed with the Australian Government Body being IP Australia who will then pass the applications onto WIPO.  WIPO will conduct all necessary examinations and will then grant registration covering all those countries.

Why should I register a trademark?

By registering a trademark it allows firms to market themselves to consumers.  It will enable you to build up a client base by drawing customers in and by branding your business, it will make your business grow.  Registration of a trademark Australia wide will give you exclusive rights to your image or word.

How does registration protect my interests?

If you are seen by other businesses as successful, they may wish to profit from your goodwill by using a similar mark whether it be an image or a word.  The registration will protect your mark and other individuals using a similar mark to yours could face a multitude of penalties.  Some of the penalties would include monetary damages for lost trade as a result of the infringement, or an immediate removal of the conflicting mark.

What if I wish to sell my business?

Registration of a trademark will certainly add value to your business.  The brand identify of goodwill within the industry can now be owned, sold or bought.  Whether you want to buy or sell a business, trademark registration is very important.

How do I enforce these rights?

Proving you have the sole right to use a particular trademark, provided you have registered it, is relatively a straight forward process.   All you need is for the registered trademark to be similar to the unregistered trademark and the outcome will fall in your favour.  Of course this would become costly and time consuming should you fail to register your trademark as you would have to pursue the action under the Fair Trading Act.

Not all companies have such a mark therefore by possessing an international trademark you will have an advantage over them.  This means that no one can infringe on your mark globally.  You can use the power of law to your advantage due to the fact that you will have complete rights to your trademark.

In order to acquire an international trademark you will need to initially file an application for registration of your trademark through the Trademark office.

However, prior to filing any such application, it is wise to engage the services of a trademark lawyer for the smooth progress of your application.  Your trademark lawyers will research your mark and eliminate any changes which may cause problems whilst passing registration.  They are also able to assist you with the filing process and if amendments need to be made during the registration stage, they will assist you.

A drawing of your mark on paper together with the description of the mark and what and where it will be used will need to be included when filing your trademark application.  The registration fee will also need to be attached.  The current fee will need to be checked with Trademarks Office.

Once your application has been filed, a receipt will be issued for registration.  This may take approximately three weeks to be received after filing your trademark application.  Your application will be pending once the receipt has been received which means that you will be a position to file for an international trademark at this time.

Once you have a pending trademark or a registered trademark within Australia you are eligible through the Madrid Protocol to file a request for an international trademark registration.

An International Trademark Registration Application will need to be filled out in order to file.  Once you have thoroughly checked the form it can be filed online through the Trademark Electronic Application System.    After this it is a matter of waiting for the next step.

You can find out the status of the registration by checking on the Trademark Applications and Registration Retrieval database.  If you are unable to access the internet, you can also call the Trademark Office for assistance.

It is a lengthy process and therefore it may be sometime prior to receiving any news regarding your application or an international trademark.  However, it will be worth your while waiting.

Receiving your certificate of registration for your international trademark means that you are on your path to global success and building your company reputation.  Do not forget to use your trademark where your company is represented, including products and advertising your goods or services.

Managing Your Own Trademark Search

First Step: Initially a preliminary search of IP Australia’s database will need to be performed to search your own trademark.  This informal search will determine whether or not your mark is presently being used by a registered or unregistered body.  Even though the other party may not have formally registered their mark, you may be accountable for trademark infringement if you endeavor to register a mark that is presently being used.  In order to avoid being sued for infringement you are able to discover whether your mark is distinctive and unused by other bodies by performing the preliminary trademark search.

A basic search can be conducted through a search engine such as Google. Although this may indicate whether your mark is extensive, however, will not determine whether your mark is eligible for trade mark registration.

We suggest that you also access IP Australia’s search tools by starting to use the ATMOSS database. The use of this database would reveal whether your proposed mark is currently being used for products or services which may correspond to your own:  eg, you may wish to register your mark as the branding for your own line of cosmetic products.  In this case, you should search for corresponding marks on cremes, perfume bottles, makeup, and other related products.

Do bear in mind that the outcome from your preliminary search will not indicate whether or not your mark is acceptable for registration.  The initial search will only give you an idea of whether or not your mark can be used at all.

Second Step: After you have performed your preliminary search, you can conduct a comprehensive search of all Australian trademark databases by using ATMOSS and IP Australia’s other search tool.  Conducting such a search will give you access to see marks which are not only a duplicate  as your own, but that are also parallel to it.

You may start your comprehensive search by inserting a particular search query into the relevant ATMOSS fields.  Search for words that are not only a duplicate to those included in your trademark but that are also parallel to it.

If you wish to proceed with your trademark application, the searches mentioned above will disclose marks currently used that are parallel to your own and which might raise infringement issues.  To determine these marks, you will need to be both specific and innovative with your search terms.  This can be done by containing only a section of your own trademark; the order of words within your trademark can be changed around; synonyms can be checked by modifying the spelling; exact phrases can be searched by adding quotation marks; using the previous example of cosmetic products, you may wish to register ‘Beautify Womens Cosmetic Range’.  In this instance, you should search for a few different phrases: ‘Beautify Womens’, ‘Beautify Cosmetic’, “Womens Cosmetic Range’, etc.  You could also change the spelling: ‘Beauty’ instead of “Beautify’, ‘ladies’ instead of ‘Womens’.  You will need to be consistent in your search to make sure that you have revealed all possible cases of infringement.

Engage a Trademark Professional to Conduct Your Search

For those who are unfamiliar with the process involved in researching a trademark search will not have the knowledge of the complexity of the procedures.  It could be as easy as missing a step or using the wrong search terms, thereby not having revealed the same or parallel marks that may present threats of infringement.  By engaging a trademark lawyer to perform your searches, you will hence receive a professional judgement of whether or not your mark would be acceptable for registration.  Additional searching resources can be accessed by your trademark lawyer who will also be able to interpret the outcome of a thorough search more precisely.

Likewise, legal assistance can be offered by your trademark lawyer if you discover any parallel marks to your own.  You may not want to change your mark; and if so, you will need the assistance of a lawyer.  You will not be able to work around the legal complexity of trademark infringement on your own.

Although you can administer a preliminary trademark search on your own, it is suggested that you obtain the assistance of a trademark lawyer before you continue with an extensive search and in particular prior to filing your application.  A trademark lawyer can have a draft application prepared prior to filing to provide a higher chance of registration of your trademark and at the same time being protected against an infringement.

Who is eligible to register a trademark?

The answer is anyone.  Any person or company or association or group or charity or a combination of the above.

Applications must have the name of the person or company as the owner.  You cannot file an application just by using your trading name or business name.  If the trademark is to be registered under a Trust then all the names of the trustees must also be submitted.

When you are ready to file the application you must submit the type of class or classes of the goods and services that you are going to provide under the trademark.  This is done so that the protection is based on your unique business requirements.

The application must have an accurate and detailed description of your trademark.  You may require the services of a trademark professional to help you to prepare and file the application on your behalf so that you can be assured that is it filled out correctly and that it won’t be rejected.

Before you file the application and to ensure that you are not infringing on any other pre-registered trademarks, you should conduct a comprehensive trademark search.  If your trademark is identical or similar to another registered trademark, it will be rejected by the Governing Body, IP Australia and the application fees will not be refunded.  You will also run the risk of being sued for infringing on other traders’ trademarks.

A trademark search will ensure that your mark will not infringe or conflict with any other trademark already registered.  IP Australia Examiners will determine whether or not your trademark is eligible to be registered.  By submitting a “Headstart Application” with IP Australia, you will be advised whether your mark is registrable (pre-assessment) and also of the costs involved in registering your trademark.

There are a number of reasons why your trademark may not be accepted for registration.  Specifically if the trademark:

(a) describes the quality, intended purpose or value of the goods and services;

(b) has a common or geographical name;

(c) is in conflict with other registered trademarks;

(d) is misleading and deceptive by way of the nature of the goods and services;

(e) generic terms.

There are many other words which cannot be registered and are protected by law.   A trademark professional will be aware of all the prohibitive words and will be able to advise you accordingly.

In order to have your trademark registered, it must be unique and not be identical or deceptively similar to other registered trademarks described by the same type/class of the goods and services you are providing.   These are the most common reasons for rejection.  Of course, a trademark professional can inform you on whether these reasons apply to your trademark.

As stated above there are a number of common trademark words you should avoid registering some of them being:

(a)         descriptive marks which describe your goods and services;

(b)         common words such as ULTRA SOFT for tissue paper or ENVIRONMENT FRIENDLY for green services;

(c)         common surnames – a name that appears from than 750 times in current Australian records;

(d)         common geographical names – such as town, suburb or state;

(e)         abbreviations, acronyms, numerals or letters commonly associated with goods;

(f)          stereotypical pictures or drawings of the goods – such as the picture of a dog for dog food.

None of the above are prohibited and can be used in conjunction with other words which others are unlikely to use.  A trademark professional can advise you on whether your trademark will be accepted.

A Brief Overview of the Registration Process

Once your application is filed, an IP Australia Examiner will examine the proposed trademark to ensure that the application has been completed correctly and it meets the requirements.  The Examiner will ensure that the trademark complies with the laws of Australia and that it is suitable for registration.  Should the trademark fail being accepted, you will then receive an Adverse Report from the Examiner stating its reasons for rejection.  You then have 15 months in which to respond to the Adverse Report to allow you to possibly have the trademark registered by complying with the requests of the Examiner.

If the Examiner deems the trademark fit for registration, it will then be advertised in the Official Journal for a period of 2 months whereby other traders have 1 month to oppose to the registration of your trademark if it infringes on their own.

If your trademark passes through this opposition period and receives no opposition, it will then proceed to registration after payment from you of the registration fees.  Once these fees are paid, IP Australia will then issue a Certificate of Registration and your trademark will be registered for a period of 10 years.   After this time, the trademark can be renewed for a further term after payment of renewal fees.

The only way to protect your intellectual property is by registering your trademark.

Should you wish to register a name inAustralia,New Zealandor throughout the world, it is best to get advice from trademark professionals like us at Trademark Solutions where we will provide you with all the necessary information and know-how in obtaining and being successful at registering your trademark.   We have a sound knowledge and years of experience in trademarking whilst offering our clients reassurance with quality service at a fixed fee price.

]]> http://www.trademarksolutions.com.au/trademark-registrations-in-australia/feed/ 0 http://www.trademarksolutions.com.au/know-how-into-trademarking-in-australia/ http://www.trademarksolutions.com.au/know-how-into-trademarking-in-australia/#comments Wed, 09 Jul 2014 10:25:10 +0000 yourseocompany http://www.trademarksolutions.com.au/?p=541

Read More…]]> Searching for a Trademark

It is recommended that before you file an application to register a trademark in Australia, whether it be a word or a logo, you undertake a search for your proposed trademark.  By undertaking a comprehensive trademark search you will be provided with information letting you know whether or not your trademark is registrable as compared with other trademarks and that you won’t be infringing on any other trademarks already registered by other parties.

The trademark search should consist of identical and/or similar trademarks within the same industry in which you trade.  Not only they need to different visually but they also need to sound different phonetically.

Entities tend to search for identical marks only whilst forgetting to identify those that would be similar to their own, which would then, most likely, be rejected upon registration by the Governing Body, IP Australia, who has control over trademark registrations within this country.

The trademark search must also include trademarks which are currently used but not registered.  Unregistered trademarks do not hold the same protection as registered trademarks but if owners can prove the extensive and consistent use of their trademark in the market place, they are still able to take legal action and sue you for copyright.

Applying for a Trademark       

Once you have established that your trademark is unique and registrable, you can then go ahead and prepare a Trademark Application.

The Application will require your details, such as name, address, nationality and occupation.  You will also need to describe the type of goods and services that you will be providing under your proposed trademark together with a high definition replica if the mark if it contains a logo, picture or a symbol.

The exclusivity of your trademark will only cover the goods and services in which you trade under.    Other owners are able to register similar trademarks provided they are registered under a different Class.   For example if you want to register the word REDFOX under the class for “clothing”, another person would be able to register the same word under the class for “transport”.

There are some 43 Classes which can identify the various goods and services in all industries.   You must therefore identify before you file the Application, in which particular Class you are going to register your trademark as once it is filed, it cannot be changed or amended.

Examination of the Trademark

Following the lodgement of your application, there is customarily a wait of between 3 to 4 months for IP Australia to examine your application. This is called the ‘examination phase’.

IP Australia will send a report which explains why your trade mark may (or may not) be accepted. It may be that your proposed application is too similar to an existing registration. It could be for many other reasons, for instance, that your proposed trade mark is offensive or too generic.  If it is rejected, depending on the grounds in which it is rejected, you may be able to make the necessary amendments for it to proceed to registration.  At this stage, you may require the services of a legal professional.

Acceptance of your Trademark

If your trademark is ‘accepted’ by IP Australia, it will then be advertised in the Official Journal.  There is a 3 month period in which any person may oppose your application. If there is no opposition, your trademark will be registered and you will be able to apply the symbol ® next to your trademark.   If you encounter an opposition, you may require the services of a legal professional.

Registration of your Trademark

If your trademark has received no opposition during the advertisement stage in the Office Journal, it can now proceed to registration by the payment of Registration Fees.   Once these fees are paid, IP Australia will finalise the Application by the issuance of a Certificate of Registration.  The registration is valid for 10 years and can be renewed after that period by the mere payment of renewal fees.

Assigning your Trademark to other parties

Should you wish to transfer the ownership of your trademark to other parties, you will need to prepare a Deed of Assignment of Trademark which must be recorded in the Trade Mark Register before the new owners can claim ownership of its rights.  You may require the services of a legal professional.

Licensing your Trademark

Your trademark can be licensed to others who may want to use your trademark for the same goods and services you provide.  You will need to prepare a License Agreement to be signed by all parties concerned and kept in hard copy.   As the owner/licensor of the trademark you should have full control of your trademark to ensure that your business is maintained by the licensee with the same high regard and standards that you have set.

The trademark will be at risk of being deemed invalid if after being licensed it is no longer distinctive of you being the owner or if your goods and services’ level of quality becomes sub-standard or is obtained from other sources.

The Trade Marks Register should be recorded with the licensees as having the permission to use your trademark ensuring that you grant very specific rights on how licensees can use your trademark as well as having the right to sue against future infringements by other parties.

You will retain the goodwill or reputation of your trademark which cannot be owned by the licensee during the licensing period and the trademark won’t be voided for non-use even if you decide not to use it.

Should you wish to register a name in Australia, New Zealand or throughout the world, it is best to get advice from trademark professionals like us at Trademark Solutions where we will provide you with all the necessary information and know-how in obtaining and being successful at registering your trademark.   We have a sound knowledge and years of experience in trademarking whilst offering our clients reassurance with quality service at a fixed fee price.

Rob White, of Avidity IP, gives some examples of good and bad trade marks and how to secure a good one.

‘Brands’ are hugely valuable business assets that form the commercial identity of your company, product or service and will include trade marks and trade names. The value of your brands should not be underestimated: in 2012, the Coca-Cola brand was valued at around $77.8 billion, a rise of 8 per cent from their 2011 figures. As part of your brand identity, a strong trade mark registration can last indefinitely; for instance, the immediately recognisable Bass Triangle logo (for pale ale) has been registered for more than 100 years.
See on www.smallbusiness.co.uk

Rob White, of Avidity IP, gives some examples of good and bad trade marks and how to secure a good one.

‘Brands’ are hugely valuable business assets that form the commercial identity of your company, product or service and will include trade marks and trade names. The value of your brands should not be underestimated: in 2012, the Coca-Cola brand was valued at around $77.8 billion, a rise of 8 per cent from their 2011 figures. As part of your brand identity, a strong trade mark registration can last indefinitely; for instance, the immediately recognisable Bass Triangle logo (for pale ale) has been registered for more than 100 years.

See on www.smallbusiness.co.uk

Yoga Pose Copyright Bid Too Big of a Stretch, Regulator Says – BusinessWeek

Dec. 10 (Bloomberg) — Yoga poses such as head-to-knee stretches and the sequences of the moves are “exercises” rather than “choreography” and can’t be copyrighted in the U.S., regulators said.

See on www.businessweek.com

Yoga Pose Copyright Bid Too Big of a Stretch, Regulator Says – BusinessWeek

Dec. 10 (Bloomberg) — Yoga poses such as head-to-knee stretches and the sequences of the moves are “exercises” rather than “choreography” and can’t be copyrighted in the U.S., regulators said.
See on www.businessweek.com