Transcript Trade Marks: FAQs - Better Boards Australasia

Trade Marks & Branding for Not-forProfit Organisations
Presented by:
Jason Watson, Partner
Saioa Echevarria Idianez, Trade Marks Attorney
FAL MARKS & BRANDS
Level 16, 356 Collins Street
MELBOURNE VIC 3000
Tel: (03) 9642 2252
Fax: (03) 9642 2272
Email: [email protected]
www.falmarks.com.au
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Overview
Australian Trade Mark Process
What if my NFP has activities
outside Australia?
Certification Trade Marks
Collective Trade Marks
Creating Successful NFP Brands
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Examples of NFP Trade Marks
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Australia: Trade Mark Basics
First to use vs. First to file
Australia accepts applications for
word, logo, shape, 3D, sound, scent
and moving mark.
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Before Applying for a Trade Mark
 Elements to consider when creating a Trade Mark:
 Is your Trade Mark memorable?
 Does your Trade Mark stand out from the crowd
(distinctive) or does it simply describe the goods or
services you offer (descriptive) by:
 Name, quality or value, price, description, intended use of
location?
 What positive/negative images does your Trade Mark
convey?
 Is your Trade Mark similar to those of your
competitors?
 Have you searched to see if your Trade Mark is
available?
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What are the steps towards TM Protection?
1. Searching
2. Application
3. Examination
 Clear Report
 Acceptance
 Adverse Report
 How to overcome adverse reports
4. Advertisement
5. Registration
6. Renewal
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Trade Mark Process
Examination report issued within 4 - 5
months:
Accepted – trade mark is advertised for 2
months for opposition
Not accepted – 15 months to overcome
objections
Registration Fee Payment:
 6 months to pay from publication.
Certificate of Registration
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Trade Marks Process
 Common Objections:
 Formalities requirements
 Conflicting Trade Marks
 Trade Mark is not distinctive:
 We need to provide evidence of use
 Relevant classes for NFPs:
 CLASS 36 – Insurance; financial affairs; monetary affairs; real
estate affairs.
 CLASS 41 – Education; providing of training; entertainment;
sporting and cultural activities.
 CLASS 45 - Legal services; security services for the protection
of property and individuals; personal and social services
rendered by others to meet the needs of individuals.
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Trade Mark Process
For both Australian and New Zealand
applications:
 No Forms: no forms are required to be signed
before filing; we do not require a Power of Attorney
or any other legal document.
 No Evidence: actual use is not required for filing; an
intention to use is sufficient.
 Fees: there are no differences in fees (official or
ours) regarding word mark, word-and-design mark,
design mark and/or three-dimensional mark.
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Trade Mark Process
 Timing: all going well, the registration process
takes approximately 9 - 10 months in Australia
and around 7 months in New Zealand, both from
the filing date to the issuance of the certificate of
registration.
 Renewals: registration is for 10 years from the
filing date.
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Trade Mark Process
What do we need for a Trade Mark
Application?
A clear representation of the trade mark that
can be photocopied / printed.
Applicant’s legal name, description and
principal place of business.
A list of the goods and services upon which you
propose using the trade mark.
If priority is to be claimed for an earlier
application in another jurisdiction, the details of
that prior application.
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What if my NFP has activities outside
Australia?
The Trade Mark should be protected in the
countries in which the NFP carries out
activities.
Madrid Application:
allows to obtain a trade mark in any or all member
states by filing one application in Australia
Not all countries are members of the Madrid
Protocol  then Direct Filing
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What if my NFP has activities outside
Australia?
 Madrid Advantages:
Cost effective.
One application covers multiple countries.
No need to appoint attorneys in each country.
Simplified management of the trade marks.
Renewals can be carried out through a single process.
 Madrid Disadvantages:
If the Australian base application is rejected, refused,
withdrawn or cancelled within 5 years from the
registration, applications in the other countries will be
affected.
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Certification Trade Marks
In order to indicate that goods or services
meet certain standards of:
Quality
Content
Method of manufacture
Geographic origin
Can be used by anybody who complies
with the standards.
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Certification Trade Marks
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Collective Trade Marks
 Trade Mark owned by an organisation.
 Used by its members to identify themselves with:
 A level of quality
 Geographical origin
 Characteristics established by an organisation
 Can be used by a variety of traders.
 Can be used by particular members of the
organisation which owns them.
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Collective Trade Marks
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Creating Successful NFP Trade Marks
 Identifying the Identity and Values of the
Organisation
 Design of the Brand
 Consistent Use
 Communication through the use of Social
Media
 Brand Development & Transformation over
time
 Legal Protection
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Creating Successful NFP Trade Marks
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Evolution of NFP Trade Marks
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Contact Us
Jason Watson
[email protected]
Saioa Echevarria Idianez
[email protected]
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