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Should I apply for a trademark registration? Expert insights

Updated: Mar 14

A trademark application should be filed when the risk of infringement to your business outweighs the cost of applying to register the mark.


This will ultimately depend on your particular business situation and your own risk tolerance.


We've identified the some of the key considerations that you should take into account when weighing up whether to apply, when you should apply, and whether you should use a lawyer or file the application yourself.



Old fashioned scales on a glass table
Weighing up whether to register a trademark?


Considerations before you apply


If you're wondering whether to apply to register, you should consider:


  • the value of registration;

  • the commercial value of the TM to your business;

  • the risk of using an unregistered TM; and

  • the costs involved in protecting the TM.


The value of registration


The main benefit of protecting a TM is the ability to stop other traders from infringing it.


Trademark infringement is the unauthorised use a substantially identical or deceptively similar TM on the goods or services covered by the registration.


There are other benefits, including having certainty over the ownership of your brand.



The commercial value to your business


If you have an established business and have been using a TM, it's definitely a good idea to register it.


The commercial value of the TM is the value of your brand recognition to your business. To get an idea of the commercial value to your business, consider the costs of rebranding .


If you're in a situation where your brand already has commercial value, and you're thinking about how to protect it, you would likely benefit from advice from trademark lawyers.


If you've not yet started your business, it's a good idea to at least do some searches to see whether a name is available before you commit to using it. Check out our guide on how to choose a good trademark.


Consider the risk of using an unregistered TM


If you don't protect your TM, another trader might start using, or register the same or a similar TM to yours.


This risk needs to be weighed up against the costs of applying for TM protection.


If another business starts using a similar TM after you, it might still be possible to register it if you used it first. However, this adds another complexity to registration, and can be avoided if you seek protection first.


Consider the costs of protection


If you decide to seek registration yourself, you'll need to pay fees to IP Australia.


The fees for filing a standard application are:


  • $250 per class if you use the IP Australia picklist to select your goods and services; and

  • $400 per class if you enter the goods and services specification manually.


Read our guide on choosing goods and services for your trademark application, which explains the difference between the IP Australia picklist and entering your goods and services description manually.


When to apply to register your trade mark


There's no one-sized-fits-all answer when it comes to when you should protect a trade mark. It depends on your business' financial situation, your use of the mark and even the nature of the mark itself.


If you already have an established business which uses a mark that has some value to you, it's a good idea to protect it sooner rather than later. Business owners in this situation often use a lawyer to help file the trademark application, or they might decide to seek registration on their own.


It is possible to apply for registration too early. Many entries on the TM register are never actually used.


It's also possible to file too late (after infringement has occurred) and your position can be made significantly worse by not having obtained protection sooner.


People decide to protect their TM at different stages.


You can apply for registration even if you only have the intention to use the TM, but you should consider the cost and benefits of protection. It can be a waste of money to file an application if you don't end up using it in respect of the sale of the goods or services you claim. Also, if you don't use it within 3 years of the date the trade mark is recorded, another person can request cancellation your registration.


Other businesses seek registration after they've been using the trade mark for several years, and they've discovered infringement.


It's definitely a good idea to protect your mark before this point!


For more guidance on applying to register a trade mark, please feel free to reach out.


Should you use a lawyer or file the application yourself?


There are benefits to using a lawyer to protect your mark on your behalf. It's important to consider whether you'd benefit from receiving expert advice before you file. In particular, if you suspect you have a legal issue, you should contact us sooner rather than later.



Need help?



If you need help with your trade mark or have a trade mark issue, contact us today.


*Please note, the information in this article is general in nature and is not legal advice. You should seek independent legal advice tailored to you and your circumstances.

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