Trade Mark Registration in Australia — How to Apply

What can be registered as a trade mark in Australia?

A trade mark is an expression of the identity of a business, usually of a product or service. The Australian Trade Marks Act 1995 (Cth) defines what may be registered as a trade mark, and the legislative definition extends well beyond words and logos. Trade marks can also be letters, numbers, shapes, sounds and scents, and in some cases colours and aspects of packaging. These less common forms are known as special types of trade marks and have their own registrability considerations.

To be registrable, a trade mark must be capable of distinguishing your goods or services from those of other traders. Purely descriptive terms, common surnames and geographic names can face objections on distinctiveness grounds. If you are still developing your brand, it helps to understand the difference between a brand name and a trade mark before you file.

Benefits of a trade mark registration

A trade mark is a valuable company asset. Trade mark ownership protects the important goodwill, reputation and identity built up under a brand.

Legal protection

• The owner is given monopoly rights in using the trade mark in respect of the goods and services for which the trade mark has been registered.
• The owner can prevent other businesses from using their registered trade mark and can initiate proceedings for trade mark infringement, which can result in remedies including monetary compensation.
• To summarise, trade mark registration provides the trade mark owner not only legal protection but also commercial benefits.

Commercial benefits

• A trade mark is an asset of a business which may appreciate over time, as goodwill in the product or service grows.
• A formal registration of rights provides a deterrent to brand copycats, avoiding losses associated with brand dilution.
• It provides confidence to consumers which can help attract sales. Products and services bearing registered trade marks have greater presence, leading to better product or service value.
• Trade mark registrations can be licensed or assigned, thereby allowing for other business models such as franchising.

Although genuine prior use of a mark can confer certain rights in Australia, an earlier filing date generally provides a significant practical advantage, so filing early matters. Read more about first to file vs first to use.

Step-by-step: how to apply for a trade mark

Baxter IP offers a simple and cost-effective process for obtaining trade mark protection for your brand.

1. Our initial consultation service with an Australian trade mark attorney will allow us to explain the trade mark process in Australia and internationally whilst gaining an understanding of your brand and your commercial objectives.
2. Pre-filing preparation and strategy, such as:
   1. A trade mark attorney evaluating your goods and services selection and ensuring that it is comprehensive and not set out in a limiting manner;
   2. A trade mark search of the Australian register, distinctiveness consideration and trade mark representation evaluation for Australia;
   3. Trade mark database searching, distinctiveness consideration and trade mark representation evaluation for an international trade mark application;
   4. Brief unregistered (common law) trade mark searching in Australia.
3. Consideration of filing options, such as:
   1. Proceeding with a standard Australian trade mark application; or
   2. Using the two-part TM Headstart service.
4. Filing of a trade mark application in Australia, internationally, or both nationally and internationally.
5. Preparing and filing a response to any trade mark examination report that arises.
6. Renewals management.
7. Filing overseas trade mark applications within six months of the Australian trade mark application through:
   1. Direct country filing
   2. Regional systems such as the European Union Trade Mark (EUTM), OAPI or ARIPO, or
   3. The Madrid Protocol international system.

Trade mark classes — choosing the right goods and services

Every application must specify the goods and services for which protection is sought, organised according to the Nice Classification — an international system of 45 classes, comprising 34 classes of goods and 11 classes of services. Your registration only protects the trade mark in respect of the classes of goods and services you nominate, so class selection directly determines the scope of your rights.

Under-filing can leave core commercial activities unprotected, while over-filing adds cost and can expose the registration to removal for non-use. A trade mark attorney will map your current and planned business activities to the correct classes and draft a specification that is comprehensive without being unnecessarily broad.

How long does trade mark registration take in Australia?

For a straightforward application, the typical journey looks like this:

1. Filing — your application receives a filing date and application number immediately.
2. Examination — IP Australia usually examines new applications several months after filing and issues either an acceptance or an examination report raising objections.
3. Acceptance and advertisement — accepted applications are advertised for opposition purposes.
4. Opposition period — third parties have two months from advertisement to file a notice of intention to oppose.
5. Registration — if no opposition is filed (or any opposition is resolved in your favour), the trade mark proceeds to registration. Because of international priority rules, registration cannot occur until at least about seven and a half months from the filing date.

In practice, applications with no objections are commonly registered around seven to eight months from filing. Applications that attract an adverse examination report or an opposition can take considerably longer. Importantly, once registered, your rights date back to the filing date, and the registration lasts ten years and can be renewed indefinitely.

Trade mark application costs

The overall cost of registering a trade mark in Australia has two components: official government fees payable to IP Australia, which are charged per class of goods or services, and professional fees for attorney work such as searching, drafting the specification, filing and responding to any examination report. The current official fee schedule is published by IP Australia.

The main variables affecting cost are the number of classes covered, whether pre-filing searches are conducted, and whether the application encounters objections or opposition. A well-prepared application — correctly classified and cleared by searching before filing — is the most reliable way to keep the overall cost of registration down.

What happens after you file? The examination process

After filing, IP Australia examines the application to check that the trade mark is capable of distinguishing your goods and services and does not conflict with earlier marks on the register. If the examiner raises objections, an adverse examination report issues, and you have a set period in which to respond — for example by argument, amendment of the specification, or evidence of use of the mark. Many objections can be overcome with a well-constructed attorney response.

Once accepted and past the opposition period, the mark is registered, and you can begin enforcing it against trade mark infringement. If you trade overseas, this is also the natural point to consider extending protection through the Madrid Protocol and to put an international trade mark management strategy in place.

Why use a registered trade mark attorney?

Self-filed applications commonly run into difficulty through poor class selection, descriptive or conflicting marks that a search would have flagged, and specifications that are too narrow to be commercially useful. Registered Australian trade mark attorneys are regulated professionals whose role spans strategy, searching, filing, prosecution and enforcement across the life of a registration. Meet our patent and trade mark attorneys to find the right person for your brand.

Frequently asked questions

How long does a trade mark registration last?

An Australian trade mark registration lasts ten years from the filing date and can be renewed every ten years indefinitely, for as long as you wish to maintain it.

Can I use the ™ symbol before registration?

Yes. The ™ symbol simply indicates that you are claiming a mark as a trade mark and can be used at any time, including while an application is pending. The ® symbol, by contrast, should only be used once the trade mark is actually registered.

What if someone opposes my application?

After acceptance, a third party may oppose registration on grounds set out in the Trade Marks Act 1995 — for example, conflict with an earlier mark (s 44), a claim that the applicant is not the true owner (s 58), or the reputation of another mark (s 60). Oppositions follow a structured evidence and hearing process before IP Australia, and your trade mark attorney can represent you throughout.

Confidentiality

Bound by the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018, your trade mark attorney keeps information obtained from you confidential. Upon filing an application to register a trade mark, the filing particulars, including the trade mark and the applicant's information, will be available to the public via the trade mark database.