Trademark Registration in Australia

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Trademark Registration in Australia

In Australia, a trademark is used to identify a unique product or service. A trademark works as a tool for protecting your brand and distinguishing it from other products or services belonging to competitors. A trademark is not just a logo. It can be a letter, word, phrase, shape, sound, logo, smell, aspect of packaging, movement or a combination of any of these. Registration of a trademark in Australia gives the trademark holder exclusive rights over the use, sale and licensing of the mark.

Competent authority for trademark registration in Australia

IP Australia is the competent authority for trademark registration in Australia. Headquartered in Canberra, Australia, it is an agency of the Department of Industry, Innovation and Science. It is entrusted with the responsibility of administering intellectual property rights and legislations related to patents, trademarks, designs and plant breeder’s rights.

Benefits of trade mark registration in Australia

A trademark can be one of the most valuable marketing tools for your business. It is often identified with the brand. It is the identity of your business you showcase to the outside world. As the business becomes more valuable, the value of the trademark increases proportionately. Having a trade mark registered in Australia has many advantages in the Australian market.

Following are the benefits of trade mark registration in Australia:

  1. It allows you to put the symbol ‘®’ along with your trade mark. Using this symbol gives a notice to others to respect your trade mark and refrain from infringing it.
  2. Trade mark registration in your name allows you to defend it better against other.
  3. It helps you to fight counterfeit products effectively.
  4. It gives you the exclusive right to license, sell and use your trade mark.

Eligibility to OWN Trademark in Australia

In Australia, before making an application for the registration of a trademark, the applicant must ensure beforehand that he/she is eligible to own one. In order to be eligible for ownership, the owner must be:

  • An individual
  • An incorporated association
  • A company
  • More than one of the above-mentioned entities (in case of multiple owners).

However, a trade mark can also be owned by an unincorporated association or a body existing under the legislation.

The applicant:

  • Must have an address for service in either New Zealand or Australia. The address for service is usually the address of the applicant or that of an intellectual property attorney or an agent filing the application on behalf of the applicant.
  • The applicant’s name cannot be a trading name
  • Must be the owner of the business organization
  • Must be the corporation’s name (if the trade mark is owned by the corporation) and should not be in the name of the directors or shareholders
  • Should be in the name of the trustees and not in the name of the trust

The intention to use the trade mark related to the goods and services should be made clear in the application.

If the trade mark is supposed to be used by a corporate body that has not been formed yet, then you can assign the trade mark in the name of the corporate body after its incorporation.

What can be trademarked in Australia?

According to the Trade Marks Act of 1995, every mark can be trademarked in Australia if it is capable of being represented graphically and it is capable of distinguishing itself from the existing trade marks in the same classes. A trade mark includes a word, letter, phrase, number, picture, logo, aspect of the packaging and a combination of all of these. It can be a corporate logo or a jingle used in the advertisement, business name, signage or packaging.

Step-by-step process of filing Trade Mark application in Australia

The following step-by-step process delineates the entire procedure right from the filing of the application to the registration of a trade mark in Australia:

  1. Check whether you have a proper trade mark or not
  2. Conducting the trade marks classification search
  3. Thoroughly search the trade mark databases
  4. Pre-requisites for filing the trade mark application
  5. Submission of the application
  6. Outcome of the application
  7. Registration of trade mark
  8. Application for extension of time
  • Check whether you have a proper trade mark or not-

Before you file the application for trade mark registration, you need to figure out issues such as entering incorrect particulars or having a misconception with respect to your trade mark will result in monetary losses as the application fee is not refundable.

One of the most common mistakes committed by applicants is confusing different types of intellectual property protection. Some confuse trade marks with being the same as design rights. Some believe that only logos can be trademarked, which is not the case as a trade mark can comprise phrases, words, sounds, movements, images, smells and a combination of all of these.

Therefore, it is always advised to take the assistance of trade mark experts before making an application. Following are the most considerations that you need to keep in mind while making an application for trade mark registration:

  • Check whether you are eligible to own a trade mark or not.
  • Check whether the mark is distinctive or not; and
  • See to it if you are comfortable with sharing the details of your address. You have the option of providing P.O. Box number too.
  • Conduct thorough searches in all the databases to check whether a similar or identical mark already exists or not;
  • Check the class of goods and services under which you want to register your products and services;
  • Whether the mark is a common or prohibited mark, sign, phrase or not;
  • Conducting the trade marks classification search -

At the time of filing the trade mark application, you need to provide a description of the goods and services you intend to use for your trade mark. Goods and services have been categorized into one or more classes. In order to find out your chosen goods and/or services fall under which class, you need to conduct a trade marks classification search.

This classification search reveals the list of goods and services classes that you can choose for your trade mark. The database presents a snapshot of the types of goods and services that fall into each class. If you have filed the application using picklist, then you are eligible for a discount on the filing fees.

The goods and services in the classification are divided into 45 classes. Before making the application, you must thoroughly think about the goods and services you want to protect using a trade mark. If you make errors at this stage, you will not be able to expand the list once you have made the application.

You should ask yourself the following questions to determine which goods and services are required to be listed:

  • What is the nature of your business?
  • Where do you derive your business income from?
  • What goods and services does your business offer?
  • How are you known by your clients/ customers?
  • Thoroughly search the trade mark databases -

The trade mark consultants always advise conducting a detailed trade mark search to find out whether a similar or identical trade mark exists or is pending in the same classes of goods and services under which you want to register your trade mark. One should search as widely as possible to reduce the chances of objections and opposition being raised by IP Australia and the public, respectively.

Searching for a trade mark is not as simple. It requires special skills, as merely searching for an identical mark is not sufficient. Our trade mark experts will be able to guide you better and provide further assistance in conducting detailed trade mark searches.

  • Pre-requisites of filing the trade mark application -

Before you start applying for the trade mark, you should know the following about your trade mark:

  • You should know about the trade mark you are applying for;
  • You must have a good idea about the classes of services and goods you want your trade mark registered for. It is important because no major changes can be introduced in the application once it has been submitted. Further, you cannot add services and/or goods once after the submission of the application.
  • Note the class number (heading) and the services and goods terms before initiating the application process.
  • If you wish to take your trade mark on a global stage, you need to ensure that your mark matches the requirements of WIPO.
  • Submission of the application-

Once you begin filling in the particulars in the application, it is not mandatory to complete the application in one go. You can save it and complete it later.

Considering that you have the required information:

  • You should pay the prescribed fee. If you are using online means, you can pay using a credit card. Where the application is made via other means, a higher application fee is charged.
  • It does not take more than 10-15 minutes to file the particulars of the application if you have all the information in hand.
  • The login session will time out automatically after one hour of inactivity with a view to protecting your privacy.
  • Make sure that your browser is Javascript enabled.
  • Make sure to enable cookies on your browser, or else the form will not work properly. Also, make sure that your computer’s cache is set to refresh every page.
  • Ensure that file attachments do not exceed the maximum limit of 40 Mb to allow for upload and conversion of the image.
  • Outcome of the application -

Examination: After filing the trade mark application, it takes a period of 3-4 months for IP Australia to examine the trade mark application to check whether the particulars in the application have been filed properly or not.

Notification: If IP Australia accepts the application, it will notify the applicant in writing via online services.

Opposition: After removing the objections, the trade mark is advertised as ‘accepted’ and left open for a period of 2 months for any third party to challenge trade mark registration on different grounds. Third parties usually file opposition because they think that your mark is similar to theirs. If these objections are raised, then you will be forced to pay the court fees to defend your claim.

Adverse Examination Report: In case the applicant receives an adverse examination report, then the applicant has a time period of 15 months from the date of the report to overcome the issues raised by IP Australia and get your application accepted. This means that the applicant has 15 months’ time to respond and have the examiner accept your responses. The examiner takes a time period of 20 business days to consider the applicant’s response.

  • Registration of Trade mark -

If you file a suitable response and are able to convince IP Australia, then your application will be accepted. However, if the matters still remain outstanding, you can also receive an adverse report. Therefore, it is always suggested by experts at Enterslice to submit your response as early as possible so that you have enough time to meet the requirements. Till the time these issues remain pending and you are unable to resolve the matters, the application will not be accepted and your mark will not be registered.

  • Application for extension of time

In case your application lapses on the ground of failing to respond to the report within a period of 15 months, you can apply for an extension of time under section 224 of the Trade Marks Act requesting to reinstate your application. 

necessary papers required for Trademark registration in Australia

All trademark applications should contain the following information about the mark:

  • The name/ownership and contact details of the applicant. The address of the applicant should either be in Australia or New Zealand. The address details should either be of the applicant itself or the address of the trademark attorney or solicitor acting on behalf of the applicant.
  • A graphical representation of the trademark has to be attached according to the image requirements.
  • You should provide a description of goods and services to which the mark applies.
  • You should attach the proof of fee payment.
  • The applicant has to provide the list of relevant classes of the goods and services the applicant intends to sell.

Cost for Trade Mark registration in Australia

There are two preferred modes of filing trademark applications in Australia. One method is using the online services offered by IP Australia, and the other mode is via Business to business for the approved businesses having high volumes of transactions. The trademark experts at Enterslice strongly recommend using these services. However, if you are not comfortable using the online services, you have the option to use alternative means of filing the application, such as via electronic funds transfer, post or even in person. It must be noted that a higher fee structure is applicable in these cases.

The trademark filing cost differs on two factors, i.e. the number of classes you want to register your mark in and the application method adopted. Applicants must consider both the costs of filing and registration of the trademark before making the application for registration.

  • Standard Application

Under the standard application route, the fee for the filing of trademark applications is $ 250 per class- with a picklist. If the trademark application is made without a picklist, the filing fee is $ 400 per class.

If the Series trademark application is made with a picklist, the prescribed fee is $ 400 per class and where the series trade mark application is made without a picklist, the prescribed fee is $550 per class.

  • TM Headstart Application

The TM Headstart application is a pre-application service which allows assessment of the application before officially applying using the online services. Where a TM Headstart (pre-application service) has been availed to file a new request, the prescribed fee is $ 200 per class. Where a TM Headstart (pre-application service) has been availed to file a new representation, the prescribed fee will be $ 150 per class. 

  • Trade Mark Assist

A new and improved online tool has been launched by the name of Trade Mark Assist to file your trademark application online. It allows you as an applicant to further explore your trademark and also identify the services and goods you want to protect.

  • By Other Means

As mentioned earlier, the trademark experts at Enterslice suggest sending your trademark applications using online services; however, if you are not able to utilize those services, then you can file your trade application via other means, which is slightly higher compared to the online methods.

The prescribed fee for making trademark applications via other means is $ 450 per class, and a series trademark application costs $ 600 per class.

Frequently Asked Questions

The trade mark filing cost differs on two factors, i.e. the number of classes you want to register your mark in and the application method adopted. Via the standard application route, the fee for the filing of trade mark applications is $ 250 per class- with picklist, and without picklist, the filing fee is $ 400 per class. Where a TM Headstart (pre-application service) has been availed to file a new request, the prescribed fee is $ 200 per class. On the other hand, if a TM Headstart (pre-application service) has been availed to file a new representation, the prescribed fee will be $ 150 per class. The prescribed fee for making trade mark applications via other means is $ 450 per class, and a series trade mark application costs $ 600 per class.

A trade mark can be renewed in Australia using IP Australia’s online services. The renewal process is effective immediately. The trade mark holder has the option to submit the renewal fee 12 months before or 6 months after the date of expiration of the trade mark.

The validity of a registered trade mark remains for a period of 10 years after the date of application for registration. Once registered, a trade mark can be renewed for another period of 10 years in order to stay in force.

Irrespective of the method adopted in the filing of the trade mark application, it takes at least 7-12 months to register your trade mark in Australia.

Australia being a common law country, you have the permission to make a trade mark and start using it to promote your goods and services without registering it. You are also permitted to use the symbol TM on your product labels. It is not illegal to use your trade mark, but such trade mark will not have intellectual property protection under the law.

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