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  • #964138
    bug
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    I am a visual artist and I’ve just registered as a sole trader as well as registering a trading name. I’ve designed a logo that I want to use for my business. I’m rather confused about what to do next.

    I want to get a trademark to get protection for my business name and logo Australia wide. I will be starting up an online store but I really only intend to make sales within Australia at this stage. If my trademark application is successful but later on down the track a business from another country with a similar name or logo sees my website and they have trademarked their own within their country – can they try to stop me from having a website that can be viewed by people from their country? Can they try to stop me from selling within their country? What if they are only trademarked within their country? What if they have taken out an international trademark after I took out my trademark? I don’t think I can afford to get an international trademark myself.

    Also I’m confused about trademark categories. I’m an artist – this means I can and do work across many mediums… I can’t afford to trademark 10 different categories though because the cost is just too much versus the income I expect to make. Really not sure what to do here…. Do I just trademark for my main field of work and then just hope no one uses the same name to trademark in another field that I want to work in?

    I’ve checked out my business reference book and the IP Australia website but couldn’t find such specific info. I’ve also searched on this website but no luck – if I’ve missed anything here please let me know the link. Thanks!

    #1003519
    petercrocker
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    Hi Bug,
    I’m no expert at all in this area but this link might be a good start:
    http://www.copyright.org.au/information/introduction/basics.htm

    Interesting that this is point they make…

    There is no system of registration for copyright protection in Australia. You do not need to publish your work, to put a copyright notice on it, or to do anything else to be covered by copyright — the protection is free and automatic. There are no forms to fill in, and there are no fees to be paid. You do not have to send your work to us or to anyone else.

    I think other areas of law may come in to play to protect your logo/name but hopefully some experts can help here?

    All the best,
    Peter

    #1003520
    Past-Member
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    For more info on copyright and laws for visual artists see:

    http://www.artslaw.com.au/

    http://www.artslaw.com.au/LegalInformation/Copyright/default.asp

    Illustrators Australia
    http://www.illustratorsaustralia.com/

    My own business name (solo) is registered in Australia (has been for years). There is a company with the same name in the US who has the .com website. I have the .com.au website. As I registered my business name long before the internet and nine years ago just automatically registered the ‘.com.au’ name.

    To get an international trademark you have to register in those countries. So if someone had it here, you would know about it when enquiring.

    If you are a first-time trade mark user and you have a trade mark that you are thinking of applying for registration, then it is worthwhile considering IP Australia’s TM Headstart. The service provides an assessment which can help you determine the suitability of your proposed trade mark for registration before you make a formal application for registration. http://www.ipaustralia.gov.au/trademarks/index.shtml

    If you are in Sydney there is a seminar by the Womens Network this week Wed 4 Feb 2009 (I think bookings close tomorrow – Monday) http://www.womensnetwork.com.au/networking-events.cfm?event_id=84&page_id=15

    I believe the speaker Sharon Givoni is actually based in Melbourne.

    http://www.sharongivoni.com.au

    #1003521
    BB
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    Hey Bug!

    We went through exactly the same thought process as you are doing now. Was all too confusing and we almost shelved the whole idea of trademarking our logo. Quotes from solicitors were way out of our budget.
    In the end we just decided to protect ourselves by starting with the TM Headstart process at IP Australia. What a wonderful service! They sorted out our questions, helped with our category selection and it was all over in a few months. We were fortunate that we had no objections from similarly named businesses etc, so the process was smooth.
    I had already purchased domain names with .com.au and .com so it was easy to just point the .com website to our Aussie one.

    It’s so very important to protect yourself. We couldn’t do it fast enough, because we’d had things snaffled from under our very noses. (Some of those people have much larger public profiles than we do!) I still have copyrighted articles lifted from the internet, mostly from people in other countries who claim them as their own.

    Don’t delay – start protecting yourself today!

    B.B.

    #1003522
    The Trade Mark Guy
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    bug, post: 2430 wrote:
    I am a visual artist and I’ve just registered as a sole trader as well as registering a trading name. I’ve designed a logo that I want to use for my business. I’m rather confused about what to do next.

    I want to get a trademark to get protection for my business name and logo Australia wide. I will be starting up an online store but I really only intend to make sales within Australia at this stage. If my trademark application is successful but later on down the track a business from another country with a similar name or logo sees my website and they have trademarked their own within their country – can they try to stop me from having a website that can be viewed by people from their country? Can they try to stop me from selling within their country? What if they are only trademarked within their country? What if they have taken out an international trademark after I took out my trademark? I don’t think I can afford to get an international trademark myself.

    Also I’m confused about trademark categories. I’m an artist – this means I can and do work across many mediums… I can’t afford to trademark 10 different categories though because the cost is just too much versus the income I expect to make. Really not sure what to do here…. Do I just trademark for my main field of work and then just hope no one uses the same name to trademark in another field that I want to work in?

    I’ve checked out my business reference book and the IP Australia website but couldn’t find such specific info. I’ve also searched on this website but no luck – if I’ve missed anything here please let me know the link. Thanks!

    I am a Registered Trade Marks Attorney and may be able to help you with some of the issues you raise.

    Firstly, the business name registration that you have done does not provide you with any property rights in the name. It is merely a consumer protection measure that the various States and Territories require you to do if you are using a name that is not your own.

    A trade mark registration will provide you with protection in all Australian States and Territories. It will not extend to other countries. If you need to, you will have to apply for registration in the countries of interest to you.

    Obviously, there is nothing to stop a trader in another country from applying to register your trade mark in their country. You may have the right to oppose the application, but your success will depend upon the reputation your trade mark has, especially in that other country. If they achieve registration, they will be able to stop you using the mark in that country.

    You indicate that you are doing an online shop, presumably in Australia. If a customer of yours logs onto your site from Europe for example, they will be making a purchase in Australia and not Europe. Therefore you may not need to have registration in that country.

    When you refer to an International Trade Mark Registration there is no registration that covers all countries. It is a term used to refer to a trade mark application under the Madrid Protocol. You still have to nominate the countries of interest to you and pay the fees appropriate for each country. The number of countries in this system is limited and you may have to file direct in other countries, often through a local agent.

    When you talk about categories, you are probably talking about the classes of the Trade Mark Register. You must describe the goods and/or services that you are going to use the mark on. This description may cover more than one class and the number of classes will affect the cost. I would be very surprised if your goods and/or services would cover 10 classes. I would think it would be more likely 1 or 2. You may need professional help in drafting this description to avoid unnecessary expense.

    I note that another reply referred you to IP Australia’s Headstart filing system. Personally I think this can be a very expensive way to find the answers to simple questions. They require you to file a complete application and they will give you a quick response. I find many people spend a lot of money on this system to receive a NO answer when it was obvious to someone with experience. I usually provide this service free of charge as part of the package of filing a trade mark.

    Please feel free to contact me if you require any further information.

    #1003523
    deborah
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    Re: confused about trademarking – overseas

    My own fog of confusion re trademarking overseas lifted a little recently when I was advised to do as other businesses that want to sell o/s do – start by trademarking in just two countries.

    I hope it’s good advice – seems sound to me. It certainly gives me some direction. Now I need to do more research to decide which two, and subsequently develop a real, live marketing strategy of my very own.

    Deb

    #1003524
    Paul Serra
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    Just a quick question if you use the TM headstart option and fond your chosen name is ok , can you trademark it yourself through ipaustralia or do you have to hire an attorney to trademark it? Is there such thing as DIY trademark?

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