trade marks & branding for not-for-profit organisations
DESCRIPTION
Trade Marks & Branding for Not-for-Profit 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] - PowerPoint PPT PresentationTRANSCRIPT
Trade Marks & Branding for Not-for-Profit Organisations
Presented by:
Jason Watson, Partner
Saioa Echevarria Idianez, Trade Marks Attorney
FAL MARKS & BRANDSLevel 16, 356 Collins Street
MELBOURNE VIC 3000Tel: (03) 9642 2252Fax: (03) 9642 2272
Email: [email protected] www.falmarks.com.au
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Overview
Australian Trade Mark ProcessWhat if my NFP has activities
outside Australia?Certification Trade MarksCollective Trade MarksCreating 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 fileAustralia 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. ExaminationClear Report
Acceptance
Adverse ReportHow 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 oppositionNot 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 AustraliaNot 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:QualityContentMethod of manufactureGeographic 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 qualityGeographical originCharacteristics 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 BrandConsistent UseCommunication through the use of Social
MediaBrand Development & Transformation
over timeLegal 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
Saioa Echevarria Idianez
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