Australian trademark registration is something that is used to distinguish one trader’s goods and services from those of a similar trademark registration. You can apply with the trademark registration process for almost any brand, logo or name, so long as you use this mark to distinguish your goods and services.
You can apply for trademark registration to register letters, numbers, words, phrases, sounds, smells, shapes, logos, pictures, and even aspects of your packaging. Australian trademark registration grants you the right to the exclusive use of your trademark. You can buy, sell, or license registered trademarks.
When you are applying for Australia trademark registration, there is a particular process that you must follow. The first step to this process is to conduct a thorough trademark search: you should conduct this search prior to using your brand, if possible.
Australian Trademark Registration Searches
Bear in mind that registering your business name, company name, or domain name does not grant you the same rights and defences as Australian trademark registration. Registering your name with ASIC or any other organisation does not permit you the right to use, market, or advertise this name in commerce unless you have taken measures to ensure that this name does not infringe upon other intellectual property.
Should you use your unregistered name in commerce, and you are found to be infringing on the rights of another trader, you can be sued by the trademark owner.
This is why trademark searches are so important. A trademark search is designed to reveal all of the existing marks that your trademark potentially infringes. A trademark search will determine whether or not your mark is available for use within your particular industry.
Trademark infringement can only apply when the goods and services of both traders are of the same category. When you are conducting a trademark search, the goods and services that are associated with your brand must be examined for potential infringements. There are a total of 45 different classes of goods and services that you can nominate in your application, and these nominated classes will determine the reach of your trademark protection. For instance, if you nominate the class for ‘clothing’ on your application, you cannot take legal action against another party using a similar mark if their products are exclusive to ‘hammers’.
You can nominate more than one class in your application, and additional fees apply for each additional class.
Trademark searches are typically complex. In order to perform a truly comprehensive search, you must identify each and every mark that is not only confusingly similar with your own, but also similar in a single element. You must also conduct a common law search that includes all unlisted and unregistered trademarks within your industry.
You can instruct a trademark professional to perform the search on your behalf. At Quick of the Mark, we offer you this service at no cost. We will perform a comprehensive search to uncover any possible infringements in order to save you time and money before you submit your application for Australian trademark registration. We utilise a range of search parameters and we will interpret the results to make sense of them for you.
Submitting an Australian Trademark Registration Application
The next step to achieving registration is to prepare and submit your application.
In your application, you are required to identify, specifically, any goods and services that you use in conjunction with your trademark. You must not only specify the current goods and services, but also those that you intend to use your trademark on in the future. Bear in mind that once your application is submitted, you cannot add or remove trademark classes. Instead, you will have to file another application, thus wasting time and money.
Once you have lodged your application, you can begin using the ™ symbol, but you cannot yet use the ® symbol associated with registered marks. The use of the ™ symbol will display to other traders that your application is pending and that you intend to defend your mark against infringement. It is a notice that you are claiming your intellectual property rights over the goods and services that your trademark distinguishes.
Australian Trademark Registration Examination
Once your application has submitted with IP Australia, it will undergo a period of examination. Your application is typically examined 3-4 months after the date of filing. If your examiner has any concerns or queries relating to your mark, you will be sent an adverse report. This adverse report will detail reasons for which your trademark cannot be registered. You are provided with a time limit to respond to the adverse report and to make amends to the stated issues.
Once you have rectified any issues, and if your examiner has no further concerns, your trademark will be advertised in the Official Journal of Trademarks. Once it has been advertised, it will undergo a 3-month period of opposition. During this time, other traders can object to the registration of your mark on the basis of infringement or commercial disadvantage. It is unusual to come up against opposition at this stage of the registration process.
Australian Trademark Registration
Once the period of opposition is over and if there are no pending oppositions, you will be required to pay your registration fee. Only once this fee has been paid have you achieved Australian trademark registration. Once your fee has been paid, you will be issued with your Certificate of Registration and granted with the right to exclusive use and protection of your trademark.
You can hold your registration for a period of 10 years, and then indefinitely with the payment of registration renewal fees. You can begin using the ® symbol to advertise your rights as a registered trademark owner. This symbol shows other traders that you have the right to exclusive use of your trademark for the associated goods and services, nationwide.
Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.
In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.
Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.