Guide to Registering a Trade Mark in Australia

Trade mark registration provides the ultimate protection for your brand identity.  It provides an exclusive right for the owner to use the mark in relation to the specified goods and services in the country in which the mark is registered. In doing so, a trade mark registration is the easiest and most cost-effective method of preventing others from using an identical or similar mark in respect of the registered goods and services. Without a registration certificate, it can be extremely difficult to enforce your trade mark rights, particularly for new businesses that are yet to establish a reputation under common law. 

A registered trade mark can be a key business asset, boosting brand identity and setting your products and services apart in the market. This article will outline the necessary steps and considerations for registering a trade mark in Australia.

What can be registered as a Trade Mark?

In Australia, a trade mark is defined as a "sign" that identifies and distinguishes your goods or services from those of other traders. While we commonly think of trade marks as brand names and logos, a trade mark registration can provide protection for a wide range of elements of branding. Some examples are provided below:

Type of Trade Mark	Example
Letters	'BMW' in respect of motor cars
Words	'Reebok' for sneakers
Names	Katy Perry for music and musical performances
Movement	'Boy leaping into the air with arms and legs outstretched' for motor cars (Toyota)
Phrases or Slogans	'Just do it' associated with Nike sneakers
Numerals	4711' the perfume
Sounds	The 'Sproing' sound associated with floor coverings and underlays for carpets
Smells	'Eucalyptus Radiata' ​for golf tees
Shapes or Aspects of Packaging	The 'Coca-Cola bottle' for soft drink
Logos
Colour	'Orange' used by Verve Clicquot on champagne ​
Device	The 'Golden Arches' for McDonalds

TIP: It is important to choose a mark that is unique and not descriptive of your goods and services.

Step 1: Trade Mark Search

Before filing a trade mark application, it is recommended that you first conduct an Australian trade mark search, using IP Australia’s online search tools, to ensure your mark is unique and not already registered. It is also wise to perform a common law search for unregistered marks in the target market that might pose a risk.

Many businesses that avoid doing their research will often receive an adverse Examination Report from IP Australia or could face potential opposition proceedings later down the track from competitors with earlier registrations.

Step 2: Filing a Trade Mark Application

To begin the registration process, you will need to prepare and submit a trade mark application. All the details in the application must be accurate and complete, as only minor changes can be made after filing. Errors in the application could lead to an objection or rejection of the application or result in a limited scope of protection for the mark. The application should include the following details:

•         Your trade mark (i.e. word, logo etc.)
•         The class(es) of goods and/or services
•         Applicant's Name and Address
•      Prescribed application fee (dependent on the number of classes and method of filing)

Tip: You need to choose the class that best reflects your goods and services. Also, think about including possible goods and services that you intend to provide in the near future. It is important to select the correct class of goods/services as it will affect the scope of your trade mark protection.

Once you have gathered all the necessary details, you can submit the application online via IP Australia's Online Services portal.

Step 3: Examination

Once the trade mark application has been filed, it will be examined by a trade mark examiner to ensure it meets the legal requirements for registrability under the Trade Marks Act 1995 (e.g. distinctiveness and correct classification). The examination process can take 3-4 months depending on the queue at the Australian Trade Marks Office. However, it is possible to expedite the examination if necessary.
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If the application doesn’t meet registrability requirements, the examiner will issue an adverse report outlining the issues and provide a 15-month period to address them. It will then be necessary to submit a response that typically involves submitting legal arguments for registration, providing evidence of the marks use, or adjusting the listed goods and services. If you are unsure, please seek professional assistance to address any concerns.

If no objections or no further objections arise, the application will be accepted for registration.

Step 4: Acceptance

Once the trade mark application has met all legal requirements, it will be accepted for registration and published in the Australian Official Journal of Trade Marks. Publication of the trade mark commences a two-month opposition period during which anyone can oppose the registration of the mark.

Step 5: Registration

Provided no oppositions are filed, or if they are resolved in your favour, once the opposition period has passed, IP Australia will officially register your trade mark, granting you exclusive rights to the trade mark in Australia. Trade Mark registration lasts for 10 years and can be renewed indefinitely every 10 years to maintain protection.

Conclusion

Registering a trade mark is a crucial step in safeguarding your brand and intellectual property. By adhering to the steps outlined above and seeking expert advice, you can streamline the registration process. Keep in mind that trade mark registration is an investment in your business’s future and necessitates ongoing maintenance to ensure continued protection for your brand.
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Adept IP has extensive experience in managing trade mark filing and registration across Australia, New Zealand, and internationally. Our expert trade mark attorneys will collaborate with you to develop a tailored trade mark strategy to suit your budget and commercial needs. For further information or advice, please contact us at [email protected] or 1300 781 618.