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The Australian Trade Mark Application Process

Australian Trade Mark Application Process

When seeking trade mark registration in Australia, prefiling preparation is essential for making the process go smoothly. Let’s take a look at the proper steps of having an Australian trade mark registered:

Australian Trade Mark Application Process

Australian Trade Mark Application Process

Selecting the Trade Mark

The trade mark application process begins with choosing an appropriate trade mark. You want to register any sign which is used to distinguish your goods and services from other traders. In most cases, your trade mark is a name, such as your business name, or a particular brand of your business or the like. Alternatively or additionally, some applicants look to have their logo registered also, which is done by way of a separate trade mark application.

Be careful not to select a descriptive trade mark because descriptive trade marks can be refused during examination. The government examiners won’t grant a monopoly to words that other traders would arguably use when describing their goods and services. Try to think of a trade mark that is distinctive but not descriptive.

Try to think of a trade mark that is distinctive but not descriptive.

Classify Trade Mark Goods and Services

Trade marks are registered in respect of identifiable goods and services. In this way, identical trade marks can exist on the trade mark register for different things, such as for beer and slippers, for example.

Selection of the appropriate goods and services is important because once your trade mark has been filed, it is not possible to broaden the scope of goods and services. While it is possible to file subsequent trade mark applications for new goods and services, one generally tries to get the nominated goods and services correct when filing the first application.

Once your trade mark has been filed, it is not possible to broaden the scope of goods and services

Register Search

Once trade mark and the goods and services have been selected, the trade mark register must be searched to identify any earlier filed same or similar trade marks which could block your trade mark application from becoming accepted.

It is important that the trade mark search is performed correctly and is more than a simple direct hit knockout exact keyword search. When searching, one must employ searching techniques to identify not only the same, but also similar trade marks, which could include phonetic trade marks and the like. Furthermore, when searching one must search within the same classes as the nominated goods and services and also those associated classes (which are related by the cross class search list).

During official examination, this is the only search that will be performed by the government trade mark examiner.

A trade mark search must be more than a simple direct hit knockout exact keyword search

Common Law Search

Many trade mark applicants gain confidence from having performed a register search and then proceed with the filing of their trade mark applications. This can be a mistake.

Specifically, in the marketplace, there may be others who have not taken the steps to have their trade marks registered, these being called common-law or unregistered trade marks.

Now, if any of these traders notice your trade mark application (such as during the two-month opposition window after the official advertised and of acceptance of your trade mark application) they could oppose your trade mark application on the basis that you are not the owner of the trade mark because they were using the trade mark first in the marketplace.

Furthermore, even if these other traders miss your opposition window, they could subsequently have their own trade mark registered by showing that they were using the trade mark before you were. In such case, both you and they would have a registered trade mark and each have a legitimate right to use the trade mark in the marketplace which could be unfortunate for you.

Common-law trade mark owners can oppose the registration of your trade mark application or have their trade marks registered also.

As such, so as to reduce the risk of your trade mark being opposed, or another trade mark also being registered, we recommend the common law or unregistered trade mark search which is a survey of the marketplace to identify potentially conflicting unregistered or common-law trade marks.

Filing of the Trade Mark Application

Assuming the above register and common-law searches don’t uncover any potential conflicts, the next step is to commit to official examination by filing the trade mark application.

Once the trade mark application has been filed, it will be examined for registrability by a government trade mark examiner, usually in Canberra.

Examination

During the official examination of your trade mark application, the government trade mark examiner will primary check two things: firstly, whether your trade mark application conflicts with any earlier filed trade marks, and secondly whether your trade mark application is too descriptive of the nominated goods and services.

If the examiner believe that your trade mark conflicts with any earlier filed trade marks it may not be the end of the story. Specifically, we may be able to show your prior use of the trade mark in the marketplace, have the earlier conflicting trade mark removed for non-use, obtain a letter of consent from the earlier trade mark owner or other circumstances.

Alternatively, if the examiner believe that your trade mark is too descriptive, we may be able to adduce evidence showing that you have been using the trade mark so extensively that it has acquired distinctiveness. In other words, we may be to show that your use of the trade mark has been so extensive, that members of the public could reasonably be said to associate the trade mark with your goods and services. In very general terms, one would need to show about three years of prior use in order to have sufficient weight of evidence.

Examination usually takes about 6 to 11 weeks but we can have it performed faster as you wish, within five working days.

Trade Mark Registered

Once through the examination process, your trade mark will be registered for a period of 10 years. You can renew your trade mark every 10 years by paying the government renewal fee.

Other Countries

It is possible to obtain trade mark registrations in other countries also. Unfortunately, there is no such thing as an international trade mark on one must either file direct applications in each country of interest, or, generally if you are looking to pursue more than four foreign countries, using the Madrid System which is a centrally administered bundle of foreign applications.

You would generally file your foreign trade mark applications within six months of having filed the Australian application. The reason is that if you do so, your foreign applications will be given the same filing date is your Australian application.

Ideally, you file your foreign trade mark applications within six months of having filed the Australian application.