A trade mark is a way of identifying your products or services from those of your competitors. Your trade mark provides a badge of origin – it symbolises the quality of your product or service.
Your word phrase letter number logo picture sound scent movement packaging is your trade mark.
What is the process to register a trade mark?
Obtaining registration of a trade mark in Australia is a lengthy process. In fact, a trade mark may not proceed to registration in less than seven and a half months.
Step 1: Make your mark
Before lodging your trade mark application, it is important to consider the parts of your brand that are the most valuable, and which would create the most effective trade mark registrations. This may be your company or product name, logo, or packaging.
Step 2: What is your trade mark used for?
An important step of the trade mark application process is to determine the products and/or services that are associated with that particular mark. A trade mark may only be filed in relation to those goods and services with which it is used, or intended to be used, in the course of trade. It is important to be aware that not using a trade mark in relation to its respective registered goods and services may be grounds for removal of the mark from the Trade Mark Register (at least for those particular goods and services). The goods and services are designated into 45 unique classes, a list of which can be found here.
Careful consideration must be given to the classes in which you register your trade mark. Although you are able to remove classes (and goods and services within a class) from your trade mark application, you cannot expand the classes (or goods and services within a class). You may be able to lodge a new application to extend the scope of your protection, however be aware that any additional applications will be associated with a new filing date.
IP Australia has released several easy to understand videos explaining more about the selection of classes for trade mark registration, which can be found here.
To have confidence that your trade mark is being registered in the most valuable classes for your business needs, please contact us.
Step 3: Lodge your application
Once you have worked through the specifics of your trade mark, the application may be lodged online using IP Australia’s e-services portal. The official government fee for lodging a trade mark application in Australia is $250 per class of goods and services.
A couple of days after filing, an official Notice of Filing a Trade Mark issues from IP Australia, confirming all details of the application, and providing you with a trade mark number. At this point, however, you do not have a registered trade mark.
Step 4: Examination
A few months after filing (typically within 13 weeks), your application will be assessed by a Trade Marks Examiner. Trade Marks Examiners are government employees who will assess your trade mark against the laws and regulations. Objections may be raised, for example, if the Examiner believes your trade mark is not capable of distinguishing your products or services from those of another person. An objection is also likely to be raised if your trade mark is similar to another trade mark that is already registered, or if your trade mark is considered descriptive of the goods and/or services you have specified.
You have an opportunity to argue against the Examiner’s objections, and these arguments are usually supplemented with relevant case law describing similar scenarios. It is generally a good idea to have a registered trade mark attorney on your side when preparing your submissions.
Step 5: Acceptance and Advertisement of Trade Mark
Once the Examiner believes that your trade mark is allowable, you will receive notification and subsequently an advertisement of your trade mark will appear in the Australian Official Journal of Trade Marks. This provides an opportunity for third parties to oppose the registration of your trade mark.
If your trade mark registration is opposed, you will have to make a decision as to whether you wish to defend your trade mark. We can assist you in weighing up the potential risks and rewards, in order to allow you to arrive at a decision that makes commercial sense.
Step 6: Registration
Providing an opposition to the trade mark is not filed within the opposition period (two months from advertisement), the trade mark proceeds to registration. The earliest a trade mark can proceed to registration is seven and a half (7.5) months after the filing date. Therefore, there may be a waiting period between acceptance and registration.
Congratulations – you are now the proud owner of your registered trade mark.
Importantly, only once your trade mark has been formally registered can you advertise your trade mark as being a registered trade mark.
Step 7: Ten years on...
In Australia, a trade mark has an initial registration life of ten years. This may be renewed in ten year intervals, indefinitely. After every decade, a renewal fee of $400 (per class) is payable to IP Australia should you wish your trade mark to remain on the register.
How much does it cost to register a trade mark?
The Official Fee for filing a trade mark in Australia is $250 per class of goods and services in which the mark is to be registered. For example, if your trade mark will be used for only a small number of closely related products then a single class will likely suffice. If you envisage the trade mark being used in several diverse products and/or services then two or more classes may be advisable. Further official fees then become payable over the life of the trade mark application and subsequent registered trade mark, as described on the IP Australia website, here.
We charge a very competitive flat fee to assist you in filing your trade mark application. Unlike the traditional trade mark filing firms, our service charge does not increase depending on the number of classes in which your trade mark is registered. We feel that the increase in Official Fee for additional classes is more than enough for our clients to worry about.
When it comes time for examination of your trade mark application, should you receive an adverse report – we continue to work on a flat-fee basis. That way, when we provide you with the Examination Report, you will have absolute clarity of the cost of having us analyse the report in-depth, providing a recommendation for proceeding, and preparing a draft response. This puts the control back in your hands – and ensures you are never surprised by an unexpected invoice.