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Intellectual property

Trademarks, what is the point?

In my last article, I touched on the importance of your intellectual property and various ways... read more

Added by:
Allan Bennetto Founder at JMango
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Ling LeeDirector at Japanese Sword Auctions Australia
Allan, thanks for your very informative article! I didn't know there were so many things you could trademark!
Intellectual property

Tips To Protect Your Intellectual Property

When it comes to your business, one of your most precious assets is your intellectual properties.... read more

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Allan Bennetto Founder at JMango
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Intellectual property

How Entrepreneurs Can Avoid Microsoft's SkyDrive Trademark Misstep

Business & Small Business Log In | Join Log In | Join Log In Join...read more

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Intellectual property

What is Intellectual Property?

It's early days and already a number of questions have been asked in relation to trademarks and... read more

Added by:
Jacqui Pryor Director at Mark My Words Trademark Services Pty Ltd
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Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
Thanks for commenting Anne. I would still encourage clients use the © symbol, or, some form of copyright notice, as this will let others know immediately that the work is protected. And, believe it or not you can actually use the ™ symbol against any 'sign' you are claiming as your tradeamrk - it doesn't even have to be a pending application! I would at the very least conduct trademark searches before applying the ™ symbol to end branding, just to be sure you're not stepping on any toes... And, yes, the formal process is a long one... it's an absolute minimum of 7.5 months in Australia.
Anne MilesManaging Director at International Creative Services
One thing I could add to this from my experience is that many people assume you need © on their work to claim copyright. This is outdated thinking now and the existence of the work alone is enough to prove it was first and that copyright prevails. There's no restriction to using the © however if you want to. Using ® however is another situation - you must have an approved and registered trademark to be able to use this symbol. Using the ™ symbol is allowed on any trademarks that are pending approval before the ® becomes effective. To go through the registration process it can be over 12 months.
Questions

Can smell and sounds be considered a mark too for trademark application?

Asked by:
Phil Khor Founder at SavvySME
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
Yes, they can be.  A trademark by definition is any 'sign' that one trader uses to distinguish its goods/services from those offered by others. Under the Trade Marks Act 1995: sign includes the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.   No matter the type of 'sign' you apply for it will be more difficult to register if it's not capable of distinguishing the associated products and services. In Australia there is only one 'smell' trademark to be successfully registered. It's the smell of in connection with golf tees! There are several new applications currently pending so it will be interesting to see how they go.
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Questions

Can I own a trademark and not necessarily use it?

Asked by:
Phil Khor Founder at SavvySME
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
Technically, yes - but I wouldn't encourage it!  Trademarks are vulnerable to removal if they are not used for a period of time, or, if at the time of filing the application the applicant had no intention to use the trademark in good faith.  A trademark may be removed on the above basis by application of a third party - so, if another person/business didn't think you were using your trademark any longer and wanted it off the database they could make an application seeking to remove it. (This would usually occur if someone was trying to register a similar trademark and yours was coming up as a problem for them). (So, technically you could continue to own a trademark without using it because it may be that no-one ever seeks to remove it). In the above circumstances though, if you ARE still using your trademark or believe you deserve to keep your registration there are options to oppose 'removal applications' so this should be considered and assistance sought.
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Questions

Can I register my own name as a trademark?

Asked by:
Phil Khor Founder at SavvySME
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
The answer here is 'perhaps. A trademark, by definition, is a sign that one trader uses to distinguish their goods/services from those of other traders. A personal name is no different to any other trademark in this sense - it must be capable of distinguishing in this manner. So, if your name is common and other people may need to use that same name in connection with similar goods/services then it could b e more difficult to register. However, if this sort of issue is reported to you by the government office there are ways you may be able to address the issue and ultimately gain registration/protection. The other thing to be aware of with registration of a personal name is that if you happen to share a name with a famous person it could be more difficult to register. For example, if your name happens to be Shane Warne and you try to register your name in connection with sports apparel/products this could be difficult - it could be confusing to the public as they may assume the products are endorsed by cricketer Shane Warne; you cannot register a trademark that's going to confuse/deceive in this manner.
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Questions

When I register a trademark for one class of goods or services, does it cover all goods and services in that class?

When I register a trademark for one class of goods or services, does this automatically give me... read more

Asked by:
Phil Khor Founder at SavvySME
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
No - when you file a trademark application you must specify the goods and/or services under each class of your application. You must have at least an honest intent to use your trademark on the goods/services you nominate, so, only select all products or services within a class if you do honestly intend on applying your trademark to them all.
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Questions

Does trademark protection automatically give rights to the related domain name?

Asked by:
Phil Khor Founder at SavvySME
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
The short answer is no. However, if you are the trademark owner there may be action you can take to acquire the associated domain name if owned by someone else in very specific circumstances. And, such action will depend on the type of domain in question, for example a .com or .com.au Firstly - trademark registration is a country by country right - so if the domain is owned/used by someone in a different country to where the trademark is registered then you can't simply claim ownership to the domain because you own the trademark 'somewhere in the world' Secondly, if the person is in the same country but uses/promotes the domain name for an unrelated business type to your own, and to the goods/services subject of the trademark registration then they're not necessarily do anything that breaches your trademark rights.  Thirdly, if the person is in the same country and using the domain for exactly the same type of product/service to what your trademark registration covers but has used it for longer than you, then they may not be doing anything that breaches your trademark rights. My tip on these sorts of things - or, anything 'infringement of trademark' related -  always do your homework and be certain of your rights (even if this means seeking professional assistance) before making any contact or threat against someone using a similar name/trademark. You can in fact get in trouble and be sued if you make a threat of legal action that's "groundless" so always careful.
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Questions

Is a registered trademark transferable?

Asked by:
Phil Khor Founder at SavvySME
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
A registered trademark, or even a pending trademark can be 'transferred' to a new owner, yes. This is done by assigning the rights from the current applicant/owner to the new. This can be done in several ways depending on the circumstances but commonly done by way of drafting a Deed of Assignment and filing this, along with the appropriate request, with the Trademarks Office who will then update the records to show the subsequent owner accordingly. There is no official/government fee. Fees could apply if you seek assistance in drafting of the Deed of Assignment.
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Questions

Is trademark registration necessary if the logo has been in used for many years?

Asked by:
Phil Khor Founder at SavvySME
Anne MilesManaging Director at International Creative Services
I'll add to this that whilst having a trademark registered is a sound idea you don't need one registered to be allowed to use it unless someone else ends up having the trademark done and makes a claim against you.
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
I may be a little biased, but yes I absolutely think a business should register its trademarks whether they've been used for many years or not. Several rights and advantages are awarded that you won't get other wise simply by using the trademark. The right to use the trademark...  this is not a guaranteed right simply by using it; The right to authorise others to use the trademark (for the goods/services you've nominated) - i.e. the right to license the use to someone else; The right to take trademark infringement action against others. (Without a registered trademark you would be relying on other areas of law to stop people using similar logos, which can be harder to prove)Plus - by registering you make it difficult for others to register (and therefore gain the right to use) similar logos in your same field of business products/services.
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Questions

How do I apply for a trademark?

Would a trademark lawyer please walk through the steps for trademark application in Australia? read more

Asked by:
Phil Khor Founder at SavvySME
Jacqui PryorDirector at Mark My Words Trademark Services Pty Ltd
I'd firstly like to clarify that you don't have to use a trademark lawyer in relation to your trademark matters; you can "DIY" (although not always recommended) or a specialist/consultant. The first step I encourage clients take is having a trademark search conducted. This can rule out and/or advise on possible problems early on. (The registration process is lengthy so this can help avoid wasting time...) Some companies, including my own, will offer a basic search at no cost. Alternatively, more comprehensive searches are available for a fee. If the search is clear, an application is filed with the trademarks office in Australia. At this time you must nominate goods/services of interest to you that your trademark will be used to identify. The filing of an application is your way of telling the government that you believe you are within your right to apply, and that you have an honest intent to use your trademark. The government department must then examine the application and issue their results. A standard application will take around 4 months to be examined. If no problems are found the mark is accepted for registration. If problems are found a report is issued providing you a chance to address those issues. After acceptance, the mark goes through a 3-month opposition period, where other people may object to the registration. Assuming no objections are filed in this time then the mark can be registered upon receipt of final fees. Registration is valid for 10 years in Australia and can be renewed each 10 years.
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