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A registered trade mark is a valuable business tool to protect your intellectual property because it is the only way that you can guarantee exclusive rights to your brand name, logo and other distinctive brand elements and assets. By registering a trade mark, you secure legal ownership rights to use that trade mark to distinguish the claimed products or services in the market. It’s the only way to truly secure your brand identity, plus it gives you the right to take legal action against those who infringe on your rights. A registered trade mark can also be a valuable balance sheet item because it can be sold, licensed or assigned to others.Trade marks can only be registered in Australia through IP Australia – a government agency which administers intellectual property rights and legislation for patents, design rights and plant breeder’s rights as well as for trade marks.
The process of registering a trade mark in Australia
It is possible to register a trade mark directly through IP Australia using their online system. However, depending on the circumstances of the application, the process can be complex and there can be many potential pitfalls. Engaging a trade marks attorney or IP lawyer at the outset to assist you on matters of eligibility and availability and to guide you through the process is the best way of avoiding unsuccessful registrations.
Six key steps involved in registering a trade mark
Step 1: Establish eligibility
To register a trade mark in Australia, you will need an address for service that is in Australia or New Zealand. You also need to determine the correct ownership of the trade mark at the time of filing, and, if the trade mark is not already used in the marketplace the applicant must intend to use, in good faith, the trade mark commercially for the goods or services nominated in your application.
Step 2: Do a trade mark search
A thorough search is imperative to avoid mistakes and wasted time and money. Before you start, you should have a clear understanding of what a trade mark is and what type of trade mark you are applying for.
You also need to know which class of goods or services your intended trade mark falls into. IP Australia has 45 pre-defined classes of goods and services from which to choose.
You can do a free search of IP Australia’s database of all trade marks registered in Australia to ascertain the availability of your trade mark. You can also choose to do comprehensive paid searches.
Step 3: File your application
IP Australia offers two different application services to meet different needs.
They have a Headstart pre-application service as well as a standard online application.
Getting the information right and correctly identifying your goods and services when preparing and filing your application is crucial as mistakes can be costly, and may not actually be rectifiable.
Your application should include:
- Full details of the trade mark owner, including a postal address
- A clear representation of your trade mark (eg the words you wish to register, a full colour image of your logo, an example of your slogan, a recording of your sound, example of a packaging element etc)
- The class/es of goods and services that your trade mark applies to
- List of goods or services within each of the nominated classes
Step 4: Examination – Standard applications
IP Australia will then examine your application (the process typically takes around three to four months). They will then either send a notice of acceptance that the filing requirements have been met and that your trade mark is acceptable for registration or send you an Adverse Report. An adverse report will indicate any problems with your applications.
An application may receive an adverse report if:
- The trade mark is not sufficiently distinctive
- If it is too similar or identical to an existing registered trade mark
- If it is too descriptive in nature
You will need to respond to an Adverse report which can be complicated and stressful. Engaging a legal professional such as a trade marks attorney can be very helpful in such instances.
Step 5. Acceptance
If your application has been accepted, your trade mark will be published on public record on the Australian Official Journal of Trade Marks and the Australian Trade Mark search for two months.
Interested parties may file notice of an initial to oppose your application during those two months, however, this does not happen too often. If it is opposed and you are successful in defending the opposition or if no-one lodges an opposition during those two months, your application will be deemed successful and will proceed to registration.
Step 6: Final registration
The whole process will take a minimum 7.5 from start to finish when all goes smoothly. Once your trade mark is registered, you then have immediate exclusive rights to the commercial use of that registered trade mark.
A registered trade mark in Australia is valid for 10 years (which starts from the initial filing date), renewable indefinitely for further 10 year periods.
Headstart Applications
These follow a similar process overall, however, the initial assessment that is conducted by IP Australia occurs before formally filing the application. An initial assessment report issues within 5 business days so that you will know with some confidence that continuing the process will result in an accepted trade mark application. If that initial result is not positive you have options to proceed further, or not – or even swap to a new trade mark that is capable of being accepted.
In conclusion
Whether you choose to DIY your trade mark registration directly with IP Australia or engage a trade marks specialist to assist you through the process, it is becoming a business imperative to protect your intellectual property. The fact that approximately 70 000 trade mark applications are made in Australia every year is a clear indication that more and more businesses are realising the valuable role that registered trade marks play in their commercial success.
