It is vital to register a trademark in Australia! Registering your intellectual property is the only fail-safe way to protect it from infringement. In order to register a trademark in Australia, you must submit an application with IP Australia. Only once your application has undergone an examination and passed through a period of opposition will you be granted your rights as a registered trademark holder.
There are two ways to approach the application process:
Apply to Register a Trademark in Australia
You might decide to apply for a trademark Headstart if you are unsure of whether your trademark conflicts with other existing marks or whether your mark is consistent with the law. Headstart is an optional service provided by IP Australia: it works as a pre-assessment of your trademark to determine its eligibility for registration.
The Headstart service will assist you in identifying objections that could be raised by your examiner, or any potential cause for legal action by registered parties.
When you apply for your Trademark Headstart, use IP Australia’s Goods and Services pick-list to nominate the classes associated with your mark. This list will assist you in determining the correct classes. The pick-list will also calculate your future fees.
You will receive an initial assessment of your trademark within 5 days of filing your application. Someone from IP Australia will contact you via email or telephone to inform you of whether or not your mark is eligible for registration, and whether you should continue to file an application to register a trademark in Australia.
The Headstart service is essentially the same as enlisting a trademark professional to conduct a trademark search on your behalf. A trademark search is a comprehensive search of Australia’s trademark databases that determines whether there are conflicting marks previously registered that would prevent your mark from achieving registration. A trademark professional can conduct this service within days, and can then interpret the results to determine whether or not your trademark is suitable for registration.
Once you have conducted a trademark search, or if you are certain that your mark is suitable for registration, you can apply to register a trademark in Australia. If you are new to the application process, you might prefer to consult a trademark professional before you file your application. A trademark professional will help you fill out your application form and file it on your behalf.
Once your application has been filed, it is examined to ensure that it does not conflict with other registered trademarks. Your examiner will also assess whether your mark complies with the law. Should your examiner find fault in your application, you will be issued with an adverse notice. This notice will outline the grounds for rejection and provide you with the opportunity to rectify them.
When your application has been accepted, or once you have made amendments to your rejected application, it will proceed to registration.
The Registration Process
Before you can register a trademark in Australia, your application must undergo the full registration process.
A trademark search will reveal any marks that conflict with your own. A trademark professional can conduct a trademark search on your behalf to determine:
- Whether your mark is already in use by another party
- Whether your mark is eligible for trademark protection
- Other similar or identical marks within your marketplace
- Whether your mark infringes on the rights of other registered trademark owners
It is important that you conduct a trademark search before you file your application for the best chance at registering your mark.
You must wait between three and four months before your filed application is examined. The examination essentially determines whether your mark complies with the Trademarks Act 1995.
So long as you meet all of the requirements, you mark will be forwarded on to registration. If your mark is unsuitable for registration, however, you will be issued with an adverse report. You are required to reply to this report within 15 months of its date of issue or your application will cease.
You can contact your examiner to discuss your application and how you might rectify its faults. IP Australia staff cannot provide you with legal advice, so if you receive an adverse report, you should consult a trademark professional on how best to proceed.
If you do not reply to the adverse report within the required time, you can apply for an extension. The registration process is lengthy, and so it is best that you submit your refutes or amendments quickly in order to push your application through to registration.
Before you can register a trademark in Australia, the details of your accepted application are published in the Australian Official Journal of Trademarks. This is so other registered trademark holders have the opportunity to oppose your mark if they believe that it infringes on their rights.
Very few accepted applications meet opposition. Once your mark undergoes opposition period, it will proceed to registration, and can no longer be opposed.
Once your application has successfully passed through the opposition period, you trademark will be registered. You will have to pay a registration fee before you are formally registered: this fee must be paid within 6 months of your acceptance date.
When you register a trademark in Australia, your protection lasts for 10 years. As a registered trademark owner, you are entitled to the exclusive use of your mark, and you may buy, sell, or license your mark to other parties. If another party infringes on your trademark rights, you have the power to take legal action against them.
Consult a trademark professional for further information on trademark registration, or if you wish to file a trademark application.
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.