Applying to a register a trade mark in Australia

What is a trade mark, and why should it be registered?

A trade mark is a sign (a name, a logo, a slogan or tag-line…even sounds, shapes and colours, used alone or in combination with each other can be trade marks) that helps customers recognise your business, distinguishing your goods and/or services from those of others.

For many businesses, a trade mark is one of their most valuable assets because it supports brand recognition, builds trust with customers and can grow in value as the business develops.

Registering a trade mark is an important step because it provides you with stronger legal rights, helps to deter copycats and provides greater confidence when investing in and promoting your brand.

Understanding the trade mark process – application to registration

If you are new to trade marks, the process can feel complicated.

While every trade mark application is different, understanding the process early can make it much easier to map out protection for your brand and avoid unnecessary (and sometimes unpleasant) surprises.

Clearance searches

The process should begin with checking whether your proposed trade mark is available and whether it is likely to be accepted by IP Australia.  This first step is key as it helps you identify any potential issues that your application may encounter before you invest significant time and money.

Application

Following preliminary searches, the next step is drafting the application.  Businesses need to ensure that their filing details (i.e. owner name, address, address for service, depiction of their trade mark) are accurate and that you adequately cover the goods and services that you will be providing under your brand.

Examination

Once your application has been filed, IP Australia will then conduct a thorough examination to determine whether the mark can be accepted for registration or if there are issues with the application that need to be addressed before the application can proceed.

The standard examination wait time is around 3 to 4 months. However, if you would like to speed up the examination process so that IP Australia provides a response within 4 to 6 weeks, you can request expedited examination.

The most common issues raised by IP Australia during examination are that your trade mark is too similar to a prior existing registered or pending trade mark, or that your trade mark lacks distinctiveness – meaning it is incapable of distinguishing your goods and services from those of other businesses.

If you wanted to “test” whether your mark will likely receive an objection due to prior existing marks or lack of distinctiveness, you can file a “Headstart” application. Headstart applications are essentially a pre-filing service whereby an Examiner assesses your trade mark before you formally apply. You will receive feedback on your application and from there you can choose to either amend it or convert it as is to a formal application.

Acceptance

If IP Australia are satisfied that your application meets the requisite registration criteria, or you have successfully overcome the objections raised during examination, the application will then proceed to acceptance.

Acceptance of the application will be advertised in the Australian Official Journal of Trade Marks and on the Australian Trade Marks Register.  Any third party will then have two months from the date of publication to oppose registration of your trade mark.

Registration

If no oppositions are filed, or oppositions against the pending application have been resolved successfully, then your trade mark will proceed to registration, with an electronic Certificate of Registration issued to the address for service listed on the Australian Trade Marks Register within 2 to 3 weeks following the end of the opposition period.

An Australian trade mark can proceed from application to registration in as little as 7.5 months from filing, allowing time for international priority claims and any third-party oppositions.

Once registered, your trade mark will remain in force for 10 years, after which you will have the option to renew the registration (for a fee) or allow it to lapse.

Need professional advice?

If you are considering a trade mark application or would like advice as to how to best protect your brand, the Intellectual Property team at Coulter Legal can help. We assist clients in navigating the trade mark process with clear advice, practical strategies and support at each stage. Whether you are filing your first application or managing a growing brand portfolio, we work with you to make the process easier by:

• conducting clearance searches and assessing registrability before filing
• advising on filing strategy, ownership and the selection of appropriate goods and services
• preparing and filing applications with IP Australia
• responding to examination reports and advising on options if objections arise
• assisting with oppositions, disputes and enforcement-related issues where needed; and
• supporting ongoing portfolio management, renewals and brand protection planning.