A trademark is one of the most valuable assets a business can own today. A trademark protects your brand identity in many of the ways it might manifest – including a name, logo, colour, slogan or even an aspect of product packaging. It is a badge of origin that distinguishes your products and services from those of other traders.
A registered trademark gives you exclusive rights over the mark, which enables you to use it on your goods and services, or alternatively, sell or license other entities to use your mark. You may also take infringement action against a person who uses the trademark without your permission on similar goods or services.
Trademarks can be registered (marked ®) or unregistered (marked ™). Using the ™ symbol on an unregistered trademark will notify other traders that you are using the trademark, and over time your brand may gain sufficient reputation and recognition by your customers that you obtain common law rights over the mark. However, although registering a trademark requires some time and cost, it is nevertheless one of the cheapest and most effective ways to proactively defend your brand identity and your rights.
Do you have a registrable trademark?
Once you decide to register your trademark, one of the first questions to determine is whether you have a registrable trademark at all. Some trademarks cannot be registered. These include:
- Marks that are merely descriptive of the goods/ services provided
- Marks that are likely to cause confusion or deception to consumers
- Marks that are the same or very similar to an earlier registered trademark that relates to similar goods/ services
- Marks that are prohibited by law (e.g. use of the word, “ANZAC”)
- Scandalous marks, or marks that are clearly offensive
It may be difficult to register the following as trademarks if they do not sufficiently distinguish your goods/ services, and others may likely want to use these in their normal course of trade:
- Names of geographical locations
- Common names of people
- Common acronyms, single letters or numerals
Are you eligible to apply?
To be eligible to apply for trademark registration with IP Australia, the government agency that administers intellectual property rights in Australia, you must be:
- an individual
- a company
- an association
- a trust (in the name of the trustees)
- or a corporation (in the name of the corporation itself).
In addition, you must have an Address for Service in Australia or New Zealand.
Prior to filing an application with IP Australia for trademark registration, it is important to do a preliminary search on IP Australia’s database to see if there are any earlier trademarks that yours may conflict with.
This is especially the case if the registrant of the earlier trade mark offers goods/ services that are similar to yours. Performing a preliminary search is crucial so that you avoid inadvertently using a trademark that has already been registered by another person and save the time financial cost of an unsuccessful trademark application.
Determining Classes of Goods and Services
IP Australia categorises goods and services into 45 different classes (Class 1 to 34 are goods, while Class 35 to 45 are services).
A list containing descriptions of the classes is available on IP Australia’s website, through the Trade Marks Classification Search tool.
By typing in general keywords into the search bar, lists of items in various classes that match your search term will appear. You can use these to determine which class(es) your goods/ services best fall under.
Applying to IP Australia
There are several ways to apply for a trademark with IP Australia – filing a standard online trademark application through eServices, by applying by post, or through an intellectual property professional.
Additionally, if you are under time constraint, unsure of the application process and wish to assess your trade mark’s chances of successful registration without the risk of mistake, you can utilise IP Australia’s pre-application service.
This option will provide you with an examiner’s preliminary assessment within 5 working days so that your application may be appropriately amended before filing.
The standard online trademark application process involves submitting the following information into the eServices system:
- A representation of the trademark
- A description of the goods and/or services to which the trademark will apply – items under particular classes are available for selection, or you may customise the description for an additional fee
- The name of the owner of the trademark (e.g. personal name or the name of a corporate entity)
- The owner’s contact information
- An Australian or New Zealand Address for Service
Upon the provision of this information and payment of the appropriate application fee, your application will be filed.
The name and address of the applicant will be published on the IP Australia database, pending the examination outcome.
Once your application is received, it will be assessed by an examiner against the requirements of the Trade Marks Act 1995 (Cth).
If your application fails to meet some of the requirements under the Act, you will receive an Adverse Examination Report detailing the grounds on which the examiner has refused to accept your application.
Common issues which arise are that your trademark is too descriptive of your identified goods/ services, or that it is similar to an existing registered trademark also used in relation to similar goods/ services.
However, this adverse finding may not be fatal to your application. The report will outline some potential means of resolving the issues identified. You may get in touch with your examiner directly through their contact details on the report to discuss your application.
You may then submit a response to the Adverse Examination Report, attaching further evidence if appropriate, with a view to having your trademark accepted by the examiner.
From the date of the Adverse Examination Report, you have 15 months to overcome the issues in the application. Further applications for time extensions are subject to fees and conditions.
Acceptance and Opposition
Once the requirements under the Trade Mark Act have been met and there are no further grounds for rejection, your application will be accepted.
However, before an accepted application can be registered, it needs to pass through the opposition period. This is a 2-month period during which the acceptance of your trademark will be advertised in the Official Journal of Trade Marks, and an interested third party may oppose the registration of your trademark.
Possible grounds of opposition include any reasons that may be given by the Registrar for rejection of a trademark application, or that the applicant is not the true owner of the trademark.
If your trademark is opposed, IP Australia will send you a notice as well as the details of the opposition. In response, you will need to file a Notice of Intention to Defend within one month, otherwise, your application will lapse.
After this, the opposing party may file Evidence in Support of their opposition within three months. You will then also be given three months to file Evidence in Answer in your defence.
You and the opposing party may agree to a 6-month cooling-off period during which negotiations may occur. If the opposition proceeds to a hearing, the Registrar may decide on the evidence presented, whether to accept or refuse to register the trademark.
If your trademark is not opposed, or if you have overcome any oppositions, your trademark will be registered, as evidenced by a Certificate of Registration issued by IP Australia.
Your details will be recorded in the Register of Trade Marks which is available to be viewed by others who may wish to do preliminary research before filing their own trademark.
Once your trademark is registered, you will have exclusive rights over it for ten years from the date of filing your initial application for registration.
A trademark may be renewed an unlimited number of times, with each renewal lasting for an additional ten years. You may renew your trade mark up to 12 months before, or six months after the expiry date. Late fees apply for renewals within six months after the expiry date but be aware that once six months have elapsed and the trademark has not been renewed, it will be removed from the register. All rights to the trademark will be lost.
Registration is crucial to securing exclusive rights over your trademark so that your business can commercially utilise your brand identity to its full potential. Given the importance of trademark registration and the occasional complexity of the process, you may wish to seek professional advice.
Experienced intellectual property professionals can help ensure the smooth advancement of your application, saving you time, costs, as well as the stress of registration in the long run.
If you wish to discuss your options to register your trademark in Australia, please do not hesitate to contact us.