Understanding Trademark Registration in Australia: Key Steps and Common Mistakes

A strong brand is one of the most treasured assets in any organisation. Whether you’re starting a new business or need to expand an existing one, registering a trademark can protect your brand identity and prevent competing businesses from using similar names, logos, or slogans. But still, many companies postpone the registration process or feel, just having a business name or domain name is sufficient.

Without a registered trademark, competitors can potentially sue you and, depending on how big your company is, bring about your demise both in terms of losing the brand value you built over time as well as financial claims if you lost a trademark claim.

In this guide, we’ll take you through the process of registering a trademark in Australia, show you some key mistakes made by businesses and share expert insight to ensure your brand is protected.

What Is a Trademark?

A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. It can be a:

• Word (e.g., "Qantas" for air travel)
• Logo (e.g., McDonald’s golden arches for restaurants)
• Slogan (e.g., Nike’s "Just Do It" for  clothing and footwear)
• Sound (e.g., the Intel chime for computer hardware)
• Shape (e.g., the Coca-Cola bottle for beverages)
• Packaging (e.g., the Tiffany & Co. blue box for jewellery)

A trademark registration provides exclusive use of the mark in association with certain goods or services, and allows the owner to take legal action to stop usage of the mark without authorisation.

Key Steps in Trademark Registration in Australia

1. Conduct a Trademark Search

Before you start the trademark application process, you need to make sure there is not already a trademark registered for the name, logo, or slogan you have in mind.IP Australia has a free database, the Australian Trade Mark Search, which allows businesses to check for existing trademarks.

Trademark practitioners are skilled to utilise databases to conduct far more extensive clearance searches, including:

• Similar-sounding trademarks
• Visually similar logos
• Pending applications and their status
• International trademarks that may impact  your domestic trademark by way of priority claim

Failing to conduct a proper search can lead to rejection of your trademark application,legal disputes, or forced rebranding.

2. Determine the Correct Trademark Class

When you apply for a trademark, you indicate what goods or services it will cover.The Nice Classification System classifies goods and services into 45 classes for trademark purposes.

For example:

• Class 25: Clothing and footwear
• Class 35: Retail and business services
• Class 41: Education and training services

You may be under protected or pay too much if you choose the wrong classes. If your business grows in new directions, you may need to register new trademarks in additional classes.

3. Prepare and Submit Your Trademark Application

Once your search is complete and you’ve harped on the correct classes of goods and services, you can apply for trademark registration via IP Australia’s online portal. 

The application requires:

• Applicant details (individual or company)
• A clear representation of the trademark
• A description of goods/services covered
• A declaration that you are the owner of the trademark
• A declaration that you intend to use the trademark

Once your application has been lodged, IP Australia will examine the application to check if the application complies with Trademark Law (Trade Marks Act 1995). In the absence of any objections, the trademark is ready for the acceptance and publication phase.

4. Respond to Examination Reports (If Required)

If IP Australia objects (you have registered a trademark that is too generic, too close to a registered trademark, or lacks distinctiveness), you may get an Examination Adverse Report. You will be given 15 months to rectify all issues mentioned in the report.

This is where the expertise of a trademark advisor can be valuable because they are skilled in drafting arguments and collating evidence in support of your application.

Common strategies to overcome a refusal include:

• Limiting the goods/ services of your application to avoid a likelihood of confusion between your mark and an earlier mark cited under Section 44 Trade Marks Act
• Negotiating a co-existence agreement and letter of consent with the owner of an earlier mark cited under Section 44 Trade Marks Act
• Removing a cited earlier mark for non-use
• Providing evidence of prior or honest and concurrent use under Section 44 Trade Marks Act
• Providing evidence of acquired distinctiveness under Section 41(3) or Section 41(4) Trade Marks Act

5. Publication and Opposition Period

Once your trademark application is accepted, it will be published for a period of two months in the Australian Official Journal of Trade Marks. This period is also known as the opposition period, which means third parties have the chance to oppose registration of your trademark, provided they have at least one ground for opposition.

If an opposition does get filed, you can defend the opposition during the opposition proceeding. If nobody objects, your trademark will register approximately 7.5 months after lodgement.

6. Trademark Registration and Renewal

When approved, your trademark is formally registered for a period of 10 years and renewable indefinitely each 10 years. It is important to note that your trademark needs to be used to avoid non-use cancellation by a third party.

Mistakes Made By Businesses When Registering A Trademark

1. Assuming Business Name Registration Equals Trademark Protection

It is false to believe that registering a business name with ASIC protects your trademark. Unfortunately, many business owners still assume that registering a business name with ASIC or securing a domain name will protect their brand. But these do not give exclusive rights to the name — only a registered trademark does.

2. Failing to Conduct a Proper Clearance Search

A superficial search using Google or IP Australia’s trademark database is not enough. Therefore, businesses should conduct a comprehensive trademark clearance search prior to using a new brand, slogan or logo, keeping in mind phonetic and visual similarities to existing trademarks.

3. Selecting the Wrong Trademark Class

Filing under incorrect goods or service classes can:

• Limit protection, leaving your business vulnerable in unprotected areas
• Waste money, registering in classes you don’t need
• Expose your trademark registration to (partial) cancellation for non-use

Expert advice ensures your trademark covers the right classes without unnecessary costs.

4. Using Descriptive or Generic Names

Trademarks must be distinctive. Common, descriptive or purely laudatory marks (e.g., “amazing bread” for a bakery goods) are difficult to register because they fail to distinguish your brand. Instead, unique or invented words (e.g.,"Kodak" or “Uber”) have much better chances of approval.

5. Failing to Monitor and Enforce Trademark Rights

Even if a business obtains a trademark registration, it must continue to monitor and enforce its trademark against any unauthorised use. Failing to do so can lead to:

• Competitors using similar names or logos, causing confusion in the marketplace and diluting your brand
• Counterfeit products using your mark, potentially causing reputational damage
• Losing rights due to lack of enforcement

Trademark attorneys provide watch services that notify you of possible infringements.

6. Failing to Cover all International Markets

Lastly, it is important that businesses register their trademark in all relevant international jurisdictions. Unfortunately,many businesses assume that their domestic trademark registration offers global protection. However trademarks and other IP rights are national rights that are not enforceable in other countries.

What You Need to Know About International Trademark Protection

If you intend to market your products and services internationally, you might want to apply for your trademark in more than one country. Using the Madrid Protocol,businesses can file for trademarks in more than 120 nations using a single application. Alternatively, IP protection firms can file trademarks in other countries directly, either via their own domestic office or via local trademark attorneys that they partner with.

For Sydney or Melbourne-based firms with global dreams, an intellectual property(IP) firm can be the answer to a global trademark and IP portfolio.

What Does a Trademark Lawyer Do

Hiring a trademark lawyer can significantly increase the likelihood of a successful application and help defend against opposition or infringement claims.Trademark professionals provide:

• Comprehensive trademark searches to avoid conflicts
• Advice on trademark classification and distinctiveness
• Application preparation to ensure compliance with national trademark law
• Negotiating co-existence agreements with global competitors using a similar brand
• Opposition defence if another party challenges your mark

Investing in professional trademark protection services is what small businesses and SMEs should do to secure their brand for the long haul.

Protect Your Brand with IP Service International

​​Trademark registration is not simply a legal formality; it is a business imperative. When launching a startup in Sydney or taking your Melbourne-based brand overseas,having a registered trademark in place across all relevant jurisdictions can protects your valuable intellectual property and set you up for success.

At IP SERVICE INTERNATIONAL, we specialise in international trademark protection, opposition, and cancellation services. We help small businesses and SMEs with our affordable services to secure national and international trademark protection while navigating the many pitfalls in international trademark law.

Ready to protect your brand?
Contact IP SERVICE INTERNATIONAL for a complimentary consultation. 

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