Understanding Trade Mark Applications in Australia

Protecting your Brand

Your name, logo or slogan can help customers recognise your business. Registering a trade mark can protect those brand elements and give you clearer rights if another business uses a mark that is too similar.

Before applying, it is worth checking what you can register, who should own the trade mark and which goods or services you need it to cover.

What is a trade mark?

A trade mark is a sign that distinguishes one business's goods or services from those of others. It may be a word, logo, phrase, colour, shape, sound, aspect of packaging or a combination of these. The sign must be capable of distinguishing your goods or services; descriptive or commonly used terms can be difficult to register.

A word mark and a logo protect different things. Depending on how you use your branding, separate applications may be worth considering. For example, registering a word mark may provide more flexibility if the design of your logo changes, while a logo registration protects the particular visual mark applied for.

Why register a trade mark?

Registration gives the owner exclusive rights in Australia to use the trade mark for the goods and services covered by the registration. It can also help the owner take action against unauthorised use of a substantially identical or deceptively similar mark in relevant circumstances.

Registering a business name, company name or domain name does not give the same trade mark rights. Businesses may still have rights arising from their use of an unregistered mark, including potential claims for passing off or misleading or deceptive conduct, but these depend on the facts and can be harder to establish.

Registration is not a general monopoly over every use of a word or image. The scope of protection depends on the registered mark, the specified goods and services, and the circumstances of the other party's use.

How does the application process work?

1. Search before applying. Search IP Australia's trade mark database for identical and similar marks, including variations in spelling, sound and appearance. Broader checks of business names, domains and marketplace use may also be useful. A search can identify risks, but it cannot guarantee that an application will succeed or that a mark will be safe to use.

2. Choose the owner and goods or services. Decide whether the applicant should be an individual or a company, and identify the goods and services for which the mark will be used. IP Australia groups them into 45 classes. You must specify the relevant goods or services within the classes; choosing a class does not automatically protect everything in it. Consider realistic future plans, as there are limits on expanding the scope of an application after filing.

3. File the application. Applications are lodged with IP Australia. You can use its standard application process or its TM Headstart pre-application assessment service. Fees depend on the process and the number of classes selected.

4. Examination. IP Australia checks whether the application meets legal requirements. An examiner may raise concerns about distinctiveness, similarity to earlier marks, ownership or the description of goods and services. The applicant can respond, sometimes with submissions, evidence or permitted amendments. Deadlines apply to overcoming an adverse examination report.

5. Acceptance, opposition and registration. If the application is accepted, it is advertised for a two-month opposition period. Another party may oppose registration. If there is no opposition, or an opposition is resolved in the applicant's favour, the mark can proceed to registration. Acceptance is therefore an important step, but it is not the same as registration.

Processing times vary. IP Australia says registration takes at least seven months from filing, even where examination is expedited. Check its current timeframes when planning a product or business launch.

Does an Australian trade mark protect you overseas?

No. Australian registration protects the mark in Australia. Businesses trading internationally may need protection in the countries that matter to them, either through national applications or an international application under the Madrid System that designates the relevant countries. Each country assesses protection under its own laws.

What happens after registration?

A trade mark registration lasts for ten years from its filing date and can be renewed for further ten-year periods. The owner should keep its details current, monitor relevant use by others and consider whether the mark continues to be used for the registered goods or services. A registration may be vulnerable to removal for non-use in certain circumstances.

Trade marks can also be sold or licensed. It is useful to decide from the outset which person or entity should own the mark, particularly where more than one business in a group will use it.

Get advice before you apply

Choosing the right mark, owner and description of goods or services can avoid costly problems later. Baird & McGregor can advise on trade mark searches, applications, objections and the protection of your business's brand. Contact our team to discuss your plans.