1. 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.auTM@fal-lawyers.com.au www.falmarks.com.au  FAL Lawyers 2014

2. 2 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 2

3. 3 Examples of NFP Trade Marks  FAL Lawyers 2014 3

4. 4 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 4

5. 5 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 5

6. 6 What are the steps towards TM Protection? 1.Searching 2.Application 3.Examination  Clear Report  Acceptance  Adverse Report  How to overcome adverse reports 4.Advertisement 5.Registration 6.Renewal  FAL Lawyers 2014 6

7. 7 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 7

8. 8 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 8

9. 9 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 9

10. 10 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 10

11. 11 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 11

12. 12 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 12  FAL Lawyers 2014

13. 13 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. 13  FAL Lawyers 2014

14. 14 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 14

15. 15 Certification Trade Marks  FAL Lawyers 2014 15

16. 16 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 16

17. 17 Collective Trade Marks  FAL Lawyers 2014 17

18. 18 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 18

19. 19 Creating Successful NFP Trade Marks  FAL Lawyers 2014 19

20. 20 Evolution of NFP Trade Marks  FAL Lawyers 2014 20

21. 21 Contact Us Jason Watson jw@fal-lawyers.com.au Saioa Echevarria Idianez se@fal-lawyers.com.au  FAL Lawyers 2014 21