If you've typed "do I need to register my trade mark" or "what does ® actually mean" into your search engine of choice, you're in good company. These are among the most common trade mark questions business owners in Australia and New Zealand search for.
Trade mark law is technical and jurisdiction-specific, and the answers you find online aren't always accurate for Australia or New Zealand businesses.
Below, we've pulled together clear, practical answers to the questions we're often asked, covering everything from what a trade mark actually is, to registration costs, timeframes, and whether worldwide trade mark protection exists.
What is a trade mark?
A trade mark (whether it is registered, or unregistered) is a sign used to distinguish your goods or services from everyone else's.
The purpose of a trade mark is to help consumers identify the origin of goods and services and distinguish them from competing offerings.
This means it is important for a trade mark to be distinctive in relation to the particular goods and services for which it is used.
What is the difference between a company name and a trade mark?
A company name (registered with ASIC in Australia, or the Companies Office in New Zealand) is an administrative identifier. It prevents another company from incorporating under the identical name.
A company name doesn't give you the right to use that name commercially, and it doesn't stop someone else registering it as a trade mark.
A trade mark is the sign used to present your brand to customers.
While securing the company name is an important administrative step, it should not be viewed as a substitute for also securing trade mark protection. A registered trade mark is often the most effective way to protect a brand because it provides a clear, enforceable right in relation to specified goods and services.
The two registers are separate and aren't cross-checked against each other. It's common for a business to trade for years under a company name, only to discover someone else already holds the trade mark and can force a rebrand.
What do the ™ and ® symbols mean?
Many people use these symbols interchangeably, but they have different meanings.
Registered owners use the symbol to notify competitors and consumers that statutory trade mark rights exist. In New Zealand and Australia, it is an offence to use the ® symbol for a trade mark that is not registered.
How do I know if a trade mark is already taken?
First, have a look at the official search tools, as these are the same registers an examiner will check against:
Australia: IP Australia's Australian Trade Mark Search, or its newer TM Checker tool, which gives a plain-English assessment of whether your proposed mark looks registrable and flags conflicting marks.
New Zealand: IPONZ's online Trade Mark Check tool, searching the New Zealand trademarks register.
A free self-search is a good first filter, but it has real limits as it is designed to catch identical or near-identical matches, not marks that are phonetically similar, visually similar, or similar in meaning (which trade mark examiners will consider).
It also won't catch unregistered marks that are in use and building up common law (passing off) rights. These can still be a problem even if they're not on the register.
We recommend conducting a full clearance search (covering registered rights and unregistered rights) at the outset before you commit to the brand name.
How do I register a trade mark and how much does it cost?The process is broadly similar in both countries: conduct searches, decide on the relevant classes of goods and services, file the application, overcome any examiner objections, survive the opposition period, and then obtain registration.
Australia: A standard application is AU$250 per class (excluding GST) (using the goods and services pre-approved pick-list), otherwise AU$400 per class (excluding GST).
New Zealand: A standard application using pre-approved terms: NZ$70 per class (excluding GST), otherwise, NZ$100 (excluding GST) per class.
In both countries these are official fees only. Professional fees also apply if you choose to engage an attorney (typically also charged per class).
Fees aren't refunded if your application is rejected, so it can be worth getting advice from the outset to avoid costly mistakes.
How long does trade mark registration take?
In Australia, the earliest a trade mark application will proceed to registration is 7.5 months.
In New Zealand, the earliest a trade mark can proceed to registration is 6 months from the filing date of the application.
In both countries, an examiner's objection or a third-party opposition will extend the timeline to registration.
How long does a trade mark last?
A trade mark registration lasts ten years from the filing date, in both Australia and New Zealand.
Trade mark registrations are renewable indefinitely in further 10-year blocks (provided you pay the renewal fee and keep using the mark).
A mark that goes unused can become vulnerable to removal for non-use by interested parties, so registering isn't a "set and forget" exercise.
Do I need a registered trade mark to use my brand?
No. You can use a brand name without registering it — simply using it in trade gives you some protection under the common law tort of passing off, and consumer law in both New Zealand and Australia.
However, unregistered rights are narrower and generally limited to the geographic area where you've actually built up a reputation. They are also considerably harder and more expensive to enforce. The claims can be more complex and typically require evidence of market recognition, goodwill, and actual or likely confusion.
Registration converts that informal protection into a statutory, nationwide exclusive right over your registered goods/services. This acts as a public deterrent, and a much stronger, more cost effective basis for enforcement if someone else starts using a similar mark for the same or similar goods/services.
Can I get a worldwide or global trade mark?
No. There's no single trade mark that covers every country, because trade mark rights are territorial: a right granted in one country only applies in that country.
What does exist is the Madrid System (via the Madrid Protocol), which both Australia and New Zealand belong to.
Rather than filing a separate application in every country you want protection in, Madrid lets you file one international application, based on a "home" application or registration, and nominate the specific member countries you want covered. If you file this within 6 months of the filing date of the home application, you can also take advantage of back-dating the priority date.
If you are filing in multiple countries at once, this usually works out to be more cost effective. However, there are a number of considerations to take into account so it’s worth getting advice first to see if using the Madrid System is right for your circumstance.
Final thoughts
Trade marks are one of the most valuable, and most overlooked, assets a business can own. A company name or domain registration might feel like protection, but neither gives you enforceable rights over your brand. Only a registered trade mark does that.
The good news is that the process in Australia and New Zealand is relatively affordable, particularly when compared to the cost of rebranding after the fact.
If you're unsure where your brand stands, or you'd like help navigating the registration process in either country, or further afield, we're happy to talk it through - get in touch.