The trademark registration process in Australia involves several stages:
This article aims to guide you through each stage of the application process.
We'll cover preparing and submitting your application, the examination process, what happens after it's accepted, dealing with oppositions, completing the registration, and keeping your trademark registered.
1. Preparing to register an Australian trade mark
Choose a unique trade mark
Before attempting to register a trade mark, you should be aware of the legal requirements for trademark registration in Australia. These requirements include that the trademark is capable of distinguishing your products and services from those of other traders.
Essentially, your mark shouldn't simply describe what you sell, and it shouldn't be a term that other traders might need to use. This means that laudatory terms like "Great" and "Best" don't make for great trade marks!
A crucial first step is to identify a unique mark that represents your business and your brand. This could be a logo, a specific combination of words, or both. The distinctiveness of your mark plays a significant role in whether you'll be able to register it.
Importantly, it should stand out from competitors and not simply describe the goods or services you offer.
See our guide for more information on what makes a good trademark.
Choose your goods or services
Equally important is determining the relevant classes of goods and services for which you'll apply.
Trademarks are registered under specific classes that are based on the products or services you'll provide under your trade mark.
This classification system helps to organise trade marks into distinct categories, making it easier to identify potential conflicts with existing trade marks.
Choosing the correct classes ensures your trade mark protection is relevant to your business operations and prevents gaps in legal protection.
You should understand the scope of your goods and services and how they fit into the broader market. You should also consider any near future expansions of your product lines or services to ensure your application covers these potential areas.
Once your application has been filed you will not be able to broaden the goods and services description without filing a new application. So it's important to get this right.
Check out our guide for choosing the right goods and services for your trade mark application.
2. Conduct a comprehensive trade mark search
Conducting a comprehensive trademark search is a critical step before embarking on the you start the trade mark process.
The purpose of conducting a trade mark search is to ensure your proposed trade mark doesn’t infringe on existing marks, and to assess the likelihood of successfully registering your mark.
An examiner at IP Australia will raise an objection to your application if they consider that your trade mark is identical or too similar to an already registered trade mark. This objection can stop you from being able to register your trade mark.
Completing a search for identical or similar trade marks to yours can save considerable time and resources by identifying prior applications or registrations that could cause issues for your application early in the process.
There are two main types of trade mark searches you should conduct: a register search and a common law search.
Undertake a trade mark register search
A register search involves checking the Australian trade mark register for any trademarks that are identical or similar to yours and that cover the same or similar products and services.
This search primarily focuses on registered marks or those pending registration.
This is the type of search IP Australia will complete when they assess your application.
Undertake a common law search
A common law search is broader, looking beyond the official register to include unregistered marks currently in use in the market.
This commonly involves searching business directories, completing general internet searches, and even searching social media platforms to find any identical or similar trademarks that could cause an issue in the future, even if that trade mark hasn’t been formally applied for or registered.
If someone is using an unregistered trade mark that is identical or similar to yours, before you use your trade mark or file your application, it can lead to issues for your trade mark, brand and ultimately your business.
The owner of the unregistered trade mark could oppose your application during the opposition period of your application based on the fact that they used it first.
They could also secure registration of that mark based on their prior use, even after you've registered your trade mark.
This could lead to a scenario where both you and another party have equivalent rights to the same trademark.
To prevent such issues from arising, you should conduct a comprehensive search beyond the trade marks register to find any common law trade marks being used in the market that are identical or similar to your proposed mark.
This proactive step not only helps identify potential issues early on but protects you against future intellectual property disputes and ensures the uniqueness of your brand.
If you've already committed to your brand, it's still worth doing a common law search so that you've got a full understanding of your rights and what might impact you in the future.
It is worth noting that the examiner doesn't do this type of search when they assess your application. An objection will only be raised against your application if there is an identical or similar mark already on the trade mark register.
The consequences of not conducting a comprehensive trademark search
If you proceed with a trade mark application that is too similar to an existing one, it could lead to legal disputes, oppositions from other trade mark owners, or a rejection of your application by IP Australia.
This not only delays the time it could take to register your mark, but could also incur additional costs in rebranding or legal fees.
If you need help conducting a trade mark search please feel free to reach out.
3. File your trade mark application
Once you're confident that your mark isn't identical or too similar to an existing trade mark, the next step is to file the application with IP Australia.
You'll need to set out your trade mark and specify the goods or services claimed in your application.
Once you've filled out the application and you're ready to file, you'll need to pay the relevant filing fees.
See our guide for a full breakdown on how much it costs to register a trade mark.
You should ensure your application is thorough and accurate, as changing details post-submission can be tricky. If there is incomplete or inaccurate information in your application, your application may face issues or may ultimately be rejected.
Once you've submitted your application, it can take 3 to 4 months for your application to be examined.
4. Examination
After you've filed your application it will be examined by a trade mark examiner. During this phase, your application will be assessed to ensure your application fulfils the legal requirements outlined in the Trade Marks Act 1995.
Among other things, the examiner will check that:
there are no formality issues with your application (for example, that the applicant listed is a company or an individual - and not a business name);
your trade mark is not identical or too similar to a prior trade mark application or registration; and
your trade mark is not generic or descriptive.
If there are no issues with your trademark application, it will move to the next stage - acceptance.
If there are issues with your application, an objection will be raised against the application, and an adverse examination report will be issued. From this point you have 15 months to overcome the issues raised or your application will be rejected.
If you have received an adverse trade mark examination report and need help, please feel free to get in touch.
5. Acceptance and Advertisement
If your application is accepted for registration, you will receive a notice of acceptance.
This notice will inform you that your trade mark has been accepted and will be advertised in the Australian Official Journal of Trade Marks.
6. Opposition
Once your trade mark has been published, a two month opposition period will start. During this period any third parties can oppose the registration of your trade mark.
To oppose your trade mark the relevant third party must file a notice of intention to oppose and detail their reasons for opposing. You will then have an opportunity to respond.
If no one opposes your application during the application period, your trade mark will be registered.
7. Registration
Once your trade mark is registered, you will have exclusive rights to use the trade mark in Australia in relation to the goods and services set out in your application and prevent others from using it.
The trade mark registration process takes at least 7-8 months from the date of application to registration. If you have any issues along the way, it can take longer.
Once your trade mark is registered, protection will be backdated to the filing date of your application.
Australian trademark registration lasts for 10 years. At the end of 10 years you have the option to renew for another 10 years.
Trade mark protection can last indefinitely if the registration is renewed every 10 years.
Trademark registration in other countries
It is worth noting that the process described above only applies if you register a trademark in Australia.
If you apply for a trade mark in another country, the process may be slightly different.
See our guide for more information on how to file an international trade mark and what different filing options are available.
Trade mark registration FAQs
If you have questions about the process, feel free to check out the Application and Registration section of our FAQ page.
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*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.