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Trade Marks

Trade Mark - Infringement - Prosecution - Dispute resolution - Litigation

  • We can investigate the availability of trade marks for use and registration;
  • Provide branding strategies for the management and growth of your trade mark portfolio;
  • File and prosecute trade mark applications before the Australian Trademarks Office;
  • File and prosecute international trade mark applications via the Madrid protocol;
  • We can prosecute trade mark infringement matters;
  • We can defend trade mark infringement matters;
  • Assess the risk of infringement of existing trade marks;
  • Advise on brand licensing and assigning trade marks;
  • Advise on packaging and labelling incorporating the relevant laws;
  • We can provide trade mark searching and watch services to locate trade marks registered in Australia or overseas.

What are they?

Trade Marks enable the owner to identify your product or service so they may become powerful and valuable business assets. They communicate the core value of your product or service. Trade mark protection is best obtained by way of registration. We are experts in the trade mark registration process. Are you considering bringing a unique product or service to market that requires some form of branding? A trade mark is a legally enforceable way to protect the following:

  • letters
  • numbers
  • words
  • phrases
  • sounds
  • smells
  • shapes
  • logos
  • pictures
  • aspect of packaging
  • any combination of these that distinguishes your product from another.

A registered trade mark under the Trade Marks Act 1995 (Cth) gives you the exclusive legal right to use, license and sell your intellectual property asset in Australia. The owner of a trade mark can apply for its registration. The registration period initially lasts for 10 years and can be continued indefinitely providing that you pay renewal fees.

It’s important that you use your trade mark—other applicants can apply to have your trade mark deregistered if you haven’t used it for more than three years. The rule is use it or lose it.

However, registration of a business, company or domain name does not give you any proprietary rights to ownership of that name. If you require exclusive use of your business name, you should register it as a trade mark. For further information on domain names

Trade Mark costs

In Australia, there are 45 distinct classes. Registered trade marks are legally allowed to use ®. Although this is not necessary. ™ represents a common law trade mark which is not registered.

To be registered in Australia, a trade mark must;

  • be distinct in its class, and not cause confusion among other marks;
  • be non-descriptive and non-promotional, so “good shoes” cannot be registered; and
  • avoid common usage words as the whole trade mark “generic words”;

A trade mark allows the holder to exclude others from using the registered mark in the same class, which is why there is only one triangular shaped chocolate bar, eg, Toberlone.

Different firms can have the same mark in different classes, such as the “Lotus” trade mark name which is used by software, automobile and door companies in Australia.

Application cost: $250 per class

Registration fee: $0 per class (removed from 10 October 2016)

Duration: Perpetual

Renewal: $400 per class every 10 years

Sweeny Legal IP will charge a research and management fee to manage the trade mark through the different phases of reporting from application to registration, and on to certification, which takes approx 7 months.

Liability by a scheme approved under Professional Standards Legislation