Do you need to know how to trademark a name in Australia? Your business relies on the goodwill associated with your intellectual property. In order to protect this property, you should apply to register your business or company name as a trademark. The following article describes how to trademark your name in Australia. Please bear in mind that this article is not comprehensive: you should contact a trademark professional for further information or assistance with intellectual property matters.
How to trademark a Name in Australia – Conducting a Trademark Search
Before you file your application, you should conduct a search of Australia’s trademark databases. You can find the appropriate search tools in the IP Australia website. Your search should include both identical and similar marks to your own. Many companies make the dire mistake of only identifying the marks that are the same as their proposed trademarks: however, if your mark is similar to another in even a single element, you could be vulnerable to infringement claims and legal action.
When you want to find out how to trademark a name in Australia, you should also conduct a common law search of your industry. This means identifying identical or similar marks that are currently in use but not necessarily registered. Even though Australia’s trademark law is based on a first-to-file system, unregistered trademark holders can still take legal action based on consistent and extensive use of their mark.
In order to perform a truly comprehensive search, you can contact a trademark professional to undertake the search on your behalf. Searching is more difficult than it seems: a trademark professional can help you steer clear of potential legal action.
The second stage to ‘how to trademark a name in Australia’ is the completion and filing of your application form. Your application requires the following information:
- Your full name, business address, and nationality
- Your intended use of your proposed trademark
- A clear and high-quality replication of your proposed mark, particularly if your mark uses graphics, colours, or non-standard typeface. You will need to include a description of your mark to compliment the replication.
In addition, you are required to nominate the classes of goods or service that your trademark is associated with. These 45 classes include all nature of goods and services, and are recognised internationally. You need to be specific and comprehensive in your class selection as the classes you nominate will restrict and define the types of goods and services you associate with your mark.
Before you nominate your classes, think carefully about the types of goods and services that you want your registration to protect. Think about the precise nature of your business, as well as the goods and services that you provide, and use the following questions to assist you:
- Where does my income come from?
- What is the nature of my business?
- What do my clients and customers know me for?
- What goods or services do I provide?
You might prefer to consult a trademark professional to assist you in your class selection: once your application is filed, you cannot make changes to your class nominations. A trademark professional can assist you in filing your application on your behalf by:
- Ensuring that your application is completed and filed correctly
- Receiving, reviewing, and advising your correspondence from IP Australia. This correspondence can be confusing to you if you are unfamiliar with the registration process
- To monitor deadlines and ensure that payments and responses are made on time
The cost of your application will vary depending on the number of classes that you nominate.
How to trademark a name in Australia – Application Examination
The third step to ‘how to trademark a name in Australia’ is the examination process. Once you have filed your application with IP Australia, it must be examined to ensure that it meets the requirements of the Trade Marks Act 1995.
Your trademark will progress to registration so long as it is in accordance with trademark law. If it falls short of these requirements, you will be issued an adverse report setting out the grounds for rejection. You must address these matters before you can proceed to registration.
If you are issued with an adverse report, you are granted 15 months from the date of the first report to rectify any issues outlined by your examiner and to have your application forwarded to registration. You are able to request extensions from IP Australia: however, you should address your adverse report as quickly as possible, as the rectification process can be lengthy.
A trademark professional can attend to your adverse report on your behalf. Some grounds for rejection are easy to rectify, while others will require evidence of your use of the proposed mark. A trademark professional can prepare and arrange this evidence on your behalf, including any required statutory declarations that you require. Some fees do apply in the case of consulting a professional about an adverse report, but it is often economical to have a professional deftly manage the report so that you do not encounter further issue.
How to trademark a name in Australia – Period of Opposition
The final stage to ‘how to trademark a name in Australia’ before you achieve registration is the opposition period. Once your application has been accepted for registration, the details of your trademark are published in the Australian Office Journal of Trade Marks. Once advertised, you mark becomes available for opposition by other registered parties.
It is rare for a mark to be opposed at this stage of the registration process. Once your mark has undergone this period unopposed, you are considered the owner of your registered trademark, and can no longer be accused of infringement.
How to trademark a name in Australia – Registration
Once your application has passed through the period of opposition unopposed, or if the opposition is unsuccessful, you can register a name in Australia. You are then required to pay the registration fee no later than 6 months after acceptance. The details of your newly registered mark are recorded on the Register of Trademarks: once this has happened, you will receive your certificate of registration.
Bear in mind that your mark is registered from the date your application was filed, not from the date it was examined or accepted for registration.
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.