When it comes to trade marks applications, trying to save money in the short term can often lead to undesirable outcomes and/or exponentially higher costs at a later date. Below are some of the common statements we hear new enquirers make time and time again.

Myth 1 1

I’ll worry about my trade mark when I start making money or I don’t need a registered trade mark.

It can be enticing to wait until your business has taken off or sales have increased above a specific threshold before ensuring your trade mark rights are protected. However, the cost and difficulty of registering a trade mark can vary based on when you choose to seek trade mark protection. Delaying seeking trade mark protection runs at least two main risks: firstly, you risk infringing another traders mark and secondly, you may dilute your own brand.

Having a registered trade mark provides you with the legal right to apply the mark to the goods and/or services which you have designated under the registration. Throughout the process of registering your mark it must undergo examination for, among other things, distinctiveness and conflicting marks already present on the Register. Accordingly, if there are any marks which are likely to cause conflict with the registration of your mark, you will become aware of that brand prior to investing money to build a brand which you may ultimately need to change.

At any point another party may seek to register their own mark which is substantially similar and/or identical to your mark. While there are certain exclusions such as honest concurrent use and prior use which may provide you an opportunity to obtain registration, it will not preclude the other trader from registering their own mark. Therefore, you may be competing with a brand which is deceptively similar or substantially identical to your own which can be confusing for customers and your brand may be damaged or less valuable.

I was using it first, so the other trader is infringing my trade mark.

The trade mark examination process does not consider the unregistered rights of other traders that may exist in Australia or abroad. Accordingly, it is possible that you may obtain a registration for a substantially identical of deceptively similar mark which another trader is using for the same or similar goods/services but has not sought registered rights to protect.

When you attempt to assert your rights, it is possible that the alleged infringer may then apply for registration and have an exception under prior use or honest concurrent use. If successful, not only is an action for trade mark infringement likely to fail but the rights provided to you by your registration may also be diluted as mentioned above. As such, you would then be trying to not only distinguish your brand from other traders but also from a very similar brand owned by another entity.

I have a business name, so I am allowed to use it as my trade mark.

A business name and a trade mark are not the same thing. When applying for a business name through the Australian Securities & Investments Commission (ASIC) website the test for determining whether a business name is available for registration is whether the name is undesirable, has any restricted words or expressions and finally whether there are any identical or nearly identical names already registered to someone else.

It is common for traders to wait until they inadvertently become aware of the other trader and/or receive a cease and desist letter and then seek advice as to their options. In many cases, receiving such a letter can leave a client feeling vulnerable and lost in how or even whether to respond. ASIC does provide a disclaimer prior to registering a business name. However, many clients have expressed the disclaimer was insufficient to make them aware of the difference between a business name and a trade mark.

I’ll just file it in my name and transfer to my company at a more convenient time.

Under s27(1) of the Trade Marks Act 1995 (Cth) only the person who claims to be the owner can apply for registration of the mark. The Full Court of the Federal Court of Australia in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83 found that the Applicant was not the true owner. In making this determination, the Court in the first instance considered who paid for the mark to be designed and for who it was designed. On appeal the Court held that if the claim of ownership is not justified at the time of filing the application, it may be subject to a successful opposition or cancellation under ss 58 and/or 59.

In light of this clarity provided by the Federal Court of Australia, a trade mark application which has been incorrectly filed is fatally flawed even after registration. Accordingly, when you attempt to enforce your rights you may find alleged infringers push back which results in a loss of your rights.

I’ll just get my trade mark registered quickly before I start selling.

The business world moves fast and therefore clients want results fast. However, the earliest a trade mark can be registered in Australia is 7.5 months. The reasoning for this is that Australia has international obligations to allow interested traders from other member countries to file Australian applications claiming priority from a base application in their country of domicile.

Key Takeaways

  • Investing in securing trade mark rights early can assist in ensuring your right to use a specific mark as well as prevent others from intruding in on your protection.
  • While being first is important, you shouldn’t merely rely on the examination process to uncover problematic marks.
  • Business names and trade marks are not the same. A business name does not provide the right to use it as a trade mark.
  • A single mistake at filing can leave your trade mark rights vulnerable until you need them most.
  • A registered Trade Marks Attorney can help you figure out what aspects of your branding would be best registered to maximise the effectiveness of a trade mark registration.
  • Obtaining any enforceable intellectual property rights takes time. Plan ahead.


If you want to ensure your trade mark rights are protected whatever stage in the business lifecycle you are in, contact one of the trade mark attorneys at Michael Buck IP for a free consultation.