1. Trade mark search
Although it is not mandatory, we recommend conducting a trade mark search before filing for a trade mark registration to ensure that there is not a prior existing mark similar to yours that could prevent your mark obtaining registration. It is also useful for you to know whether there are similar marks in the marketplace. Searches include the IP Australia trade mark database, government databases (for business and company names) and general marketplace searches.
2. Complete and file the Application
Once the relevant searches have been conducted with the results showing the mark is not too similar to a previously existing mark, then a trade mark application is filed with IP Australia.
At this stage it is necessary to define the goods and services for which trade mark protection is sought. This should be as broad as possible (but not so broad as to be meaningless) as you are endowed protection from a potential infringer only for the goods and services covered by the application. It should include even future uses of the mark.
IP Australia will then examine the mark to ensure it meets the requirements for registrability in Australia. Examination currently occurs around 2-3 months after filing the application, however it is possible to request an expedited examination.
What types of trade marks are registrable?
Trade mark applications are submitted to IP Australia who examine the mark for registrability. To be registered, a trade mark generally cannot be:
- descriptive or laudatory of your goods and/or services; or
- too similar to another trade mark on the Register; or
- a common surname; or
- a geographical place name (if that place has significance for the particular goods and/or services).
However, there are exceptions to these rules, particularly if the trade mark has been used for some time and acquired a reputation.
4. Respond to objections, if any
Objections arising from examination are common. They can often be overcome by:
- submitting legal arguments as to why the mark should indeed be registered; or
- providing evidence that the mark has been in use for a sufficient time; or
- altering the goods/services of the trade mark specification.
If there are no objections from IP Australia, or they are overcome, then a notice of acceptance will issue. The acceptance and details of the mark will be published shortly thereafter, and once published, there is a three month period in which other parties can formally oppose the registration of the mark.
If there is no opposition, then trade mark is registered upon payment of the $300 per class registration fees. Note that in order to ensure that no internationally filed trade marks will claim priority in Australia the application will cannot proceed to formal registration until around 7½ months from the application date. Once registered, however, your trade mark rights will be taken to have been valid from the application date.