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Can I Register a Trademark as a Sole Trader?

Can I Register a Trademark as a Sole Trader?

Protecting goodwill is vital for any business. Find out the relevant considerations for trademarks when you register as a sole trader.

5th May 2021
Reading Time: 3 minutes

In short yes! You can register a trademark as a sole trader. In Australia to register a trademark you can be an individual or a company. If your business operates as a sole trader, the trademark must be applied for in the business owner’s name. There are 2 methods you can use to apply which we will discuss and some other considerations. For a recap on how to register a trademark check out this infographic.

Eligibility

To register a trademark as a sole trader there are some basic requirements to meet in order to be eligible. The registered owner of a trade mark can be an individual, company, incorporated association or a combination of those. For sole traders specifically:

  • You need to provide an address for service in Australia or New Zealand. Your place of business is usually sufficient. You could also make this the office of your intellectual property attorney or solicitor if you have one.
  • The registered owner’s name can’t be a business name or trading name.
  • Your registration should be as an individual business owner
  • You must currently be using or plan to use the trademark the near future. This use needs to be in association with the goods or services included in your application.

Trade Mark Squatting

It is illegal to register a trademark owned by someone overseas. This is because Australians are often aware of products sold in the United States of America or the European Union through the internet. Therefore, restrictions on registering overseas trademarks are to stop people profiting off the established goodwill someone else has worked hard to accumulate in their trade mark. For more information about trade mark squatting can be found in this legal guide.

Ways to Register a Trademark

The Normal Process

There is a standard online application available through IP Australia. You will need to:

  • Provide information to prove your eligibility
  • Indicate the trademark class relevant to your application
  • Provide information on the associated business name, goods or services
  • The trademark itself in the form of a logo, words, image, sound, number or scent

Once submitted you can only make minor changes to the trademark. If there are any significant changes you will need then to apply for a different trademark. The main benefit of this process is you receive an immediate filing date. This can assist in any disputes in the application process or in the 2 month opposition period after your trademark is approved.

TM Headstart

This application method is offered by IP Australia in order to provide businesses with the opportunity for prior assessment of the trademark. The feedback from this process can save on time and costs overall by identifying any areas that would block your registration. The trademark can then be amended and the normal process will begin from there. Find out more information about TM Headstart in this blog post.

How to Show your Trademark

Using The ™ Symbol

This symbol indicates the trademark is unregistered. It can indicate that you are the first user and owner of the trademark. If this is the case and someone registers your trademark before you evidence of use like this can be invaluable in opposing the competitors mark.

Using The ® Symbol

The registered symbol indicates that whatever is is next to is a registered trademark. This means the owner has exclusive rights to its use. It is illegal to use the ® symbol for unregistered trademarks. 

The Cost of Registering a Trademark

Costs are important to sole traders, particularly because they bear liability for the business personally. Trademark costs vary on the class you’re seeking to register the trademark in and how many classes you wish to register for. There are 45 classes in total. You will only be allowed to register for classes that are relevant to the business name, goods or services associated with your application. A great way to save on costs is to think about who you sell to and who you may sell to in the future. Ruling out areas that could apply but aren’t relevant to your business will reduce your costs. Its also important to think about how far off you are from being ready to sell into a class in the future. IP Australia’s picklist can help you understand what classes are relevant to you.

As discussed earlier in this article there is also an added cost to using the TM Headstart process when compared to a standard application. However TM Headstart will be cheaper than applying twice.

A trademark lawyer will be able to give you relevant legal advice to realistically narrow the field. They can also help develop and advise on your trademark strategy to help you get the best value out of your investment.

Conclusion

Whether a business name, product or service, trademarks can be invaluable to growing and sustaining your business. As mentioned to register as a sole trader you can choose from the normal application process or use TM Headstart. Similarly, its important to think about what the relevant classes for your trademark, make sure you are using the correct symbol and be conscious of the relevant costs you may incur. These considerations will help ensure the success of your trademark registration as a sole trader.

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Author
Matthew Rupp

Matthew is a Legal Tech Intern at Lawpath working in the content team. He is in his final year at Macquarie University. He is focused on making legal information accessible and easy to understand. He is interested in IP law, environmental planning law and administrative law.