Trademark Registration

Trademark registration grants you the exclusive right to use your mark as your identifying brand. While your registered business name provides you with minimal protection, trademark registration permits you to take legal action against infringers or imitators attempting to profit from your company’s goodwill. Registering both your business name and your business mark ensures that the time and money you spent designing your intellectual property are not wasted.

The internet and social media make you vulnerable to infringement online. Your competitors might attempt to use your mark to sell their own products and services: consumers could wind up confusing someone else’s products with your own, higher quality products, thereby damaging your goodwill and your income. You rely on your good reputation for service and product quality to lead customers back to your brand. Protecting your trademark – and therefore your business – is an important step in increasing your goodwill and your reputation with consumers. It is strongly recommended that you trademark your intellectual property to prevent someone else from profiting from it.

Never mind if you are founding a new business or seeking protection for a pre-existing company: trademarking your intellectual property is the first step to protecting your intangible assets.

IP Australia’s Trademark Registration Guidelines:

  1. Australia’s trademark legislation dictates that the first applicant to file for registration for a mark will be the successful application, regardless of whether they designed the mark in question. This ‘first-to-file’ basis means that a competitor could successfully register one of your trademarks as their own, thereby excluding you from using it.
  2. Trademark registration is to only way to truly protect your mark. Your rights can only be enforced upon registration of your mark.
  3. Registration Benefits:
  4. Trademark registration grants you the exclusive right to use your mark to distinguish your products or services, both online and offline.
  5. Your trademark rights permit you to take legal action against parties that infringing upon your rights through unlawful use of your mark, or use of a confusingly similar mark.
  6. By registering your trademark, you are creating valuable intellectual property that can be bought, sold, or licensed to another party.

The Trademark Registration Process

Before you file a trademark application, it is essential that you conduct a series of initial and comprehensive searches of all of the relevant Australian trademark databases. These searches will reveal whether or not your mark is available for registration by unearthing marks that are identical to or able to be confused with your mark. If you discover that another company holds ownership of a mark similar to your own, you will find that you experience difficulty in registering your own mark. You might also find that, in attempting to register your mark, the registered trademark owner of a similar mark will take legal action against you for infringing upon their rights.

Once your application has been filed and lodged with IP Australia, it will be examined for eligibility for registration. To be successfully passed on to the next stage, you application will need to include an accurate description of goods or services; have nominated the appropriate classes of goods or services; and outline the current and intended use for that mark.

Once your application is accepted, it will undergo a period of opposition, during which another party may choose to oppose your eligibility for registration. If your mark passes through this period unopposed – and most do – you will proceed to registration and be granted rights as a trademark holder.

Trademark Registration FAQ

What Can Interfere with a Trademark Application?

Once you have filed your application, your examiner will either send you a ‘notice of acceptance’, or an ‘adverse notice’. If you receive an adverse notice, it means that the examiner has found grounds for rejection in your application that you must remedy if you wish to achieve registration. These grounds for rejection may include:

  • You have not clearly specified the associated products and services in your application
  • You must provide evidence of use of your mark
  • You have not clearly specified the impact that your mark will have on the surrounding industry
  • You have not clarified the uniqueness of your mark
  • Your mark conflicts with someone else’s mark
  • Other special circumstances

Similarly, during the opposition period, other parties may oppose your application on the grounds that:

  • Your mark will create an unfair monopoly of power over the market
  • Your mark is too similar to their own, and identifies the same classes of product or service
  • Your mark contains inappropriate logos of phrases
  • Your mark makes inappropriate references to their own business or trademarks

How Do I Conduct a Trademark Search?

IP Australia provides you with a number of search tools to navigate Australian trademark databases. You can find user guides and help webpages on the IP Australia website: however, it is advised that you hire a trademark professional to conduct these searches on your behalf. A trademark professional will not only conduct searches within your specific industry, but also within other related industries, to ensure that your mark has the best chance of achieving registration.

What Rights Am I Granted Under Australian Trademark Law?

Your trademark rights include the following:

  • You can prevent online offenders from advertising under your mark or using your trademark terms in their advertisements
  • You control whether other parties can claim association with your company
  • You can take legal action against other parties using your mark on their own products and services
  • You can prevent other parties from setting up businesses under your trademarked name
  • You can prevent other parties from developing marketing material with your trademark on it