Trade Marks & Branding for Not-for-Profit Organisations

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: TM@fal-lawyers.com.au www.falmarks.com.au  FAL Lawyers 2014

Overview • Australian Trade Mark Process • What if my NFP has activities outside Australia? • Certification Trade Marks • Collective Trade Marks • Creating Successful NFP Brands  FAL Lawyers 2014

Examples of NFP Trade Marks  FAL Lawyers 2014

Australia: Trade Mark Basics • First to use vs. First to file • Australia accepts applications for word, logo, shape, 3D, sound, scent and moving mark.  FAL Lawyers 2014

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?  FAL Lawyers 2014

What are the steps towards TM Protection? • Searching • Application • Examination • Clear Report • Acceptance • Adverse Report • How to overcome adverse reports • Advertisement • Registration • Renewal  FAL Lawyers 2014

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  FAL Lawyers 2014

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.  FAL Lawyers 2014

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.  FAL Lawyers 2014

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.  FAL Lawyers 2014

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.  FAL Lawyers 2014

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  FAL Lawyers 2014

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.  FAL Lawyers 2014

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.  FAL Lawyers 2014

Certification Trade Marks  FAL Lawyers 2014

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.  FAL Lawyers 2014

Collective Trade Marks  FAL Lawyers 2014

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  FAL Lawyers 2014

Creating Successful NFP Trade Marks  FAL Lawyers 2014

Evolution of NFP Trade Marks  FAL Lawyers 2014

Contact Us Jason Watson jw@fal-lawyers.com.au Saioa Echevarria Idianez se@fal-lawyers.com.au  FAL Lawyers 2014

Trade Marks & Branding for Not-for-Profit Organisations