How to Register a Trademark in Australia

Posted on February 15, 2014 by - Trademarks

  • Are you looking for information on how to register a trademark in Australia?
  • Trademark registration can include a number of different ‘marks’ used in conjunction with goods and services used in trade. An Australian registered trademark could be any one, or a combination, of words, phrases, letters, numbers, sounds, smells, shapes, logos, pictures, movements, or aspects of packaging. You can even trademark plants!
  • The only sure way to protect your business trademark and intellectual property from infringement is to register a trademark in Australia. You can also apply for international trademark registration if you intend to expand your business overseas.
  • The following article outlines the application and registration process and is Australia-specific. For further information or other enquiries, please feel free to contact us.

The Benefits when you Register a Trademark in Australia

You really should register a trademark in Australia, however trademark registration is not a legal requirement. Your unregistered mark can be protected to some extent by common law: you can even enforce your rights. However, without trademark registration, it is difficult and expensive to enforce your rights to your mark. The most effective and simplistic protection you can attain is to register a trademark in Australia.

Once you have registered your mark as a trademark, no other trader can use an identical or similar mark to your own to distinguish the same or similar goods and services. For example, Apple Inc. registered the word ‘apple’ under a number of classes related to technology on an international scale. Because of this, no other trader within the technological industry can use, or register, the word ‘apple’ within their own trademark. Similarly, other traders cannot use or register symbols similar to Apple Inc.’s.  There was a recent dispute between Apple Inc. and a New Zealand phone case company over the use of the letter ‘I’ in a product name, iPhone vs Driphone case here.

Trademark Application and Registration

To register a trademark in Australia, you need to submit an application with IP Australia. IP Australia is the government authority that monitors trademark registration within Australia. Before you can be approved for registration, you must adhere with the criteria set down by IP Australia and trademark legislation. These criteria include:

  • Whether your mark is eligible for registration
  • Whether your mark is likely to cause consumer confusion by being too similar to another mark
  • Whether your nominated goods and services classes are appropriate

Trademark Application

To register a trademark in Australia, you must first submit an application. This is a process that, on the surface, seems very simple, but can actually become complex and time consuming, particularly for those unfamiliar with trademark law. For assistance in the search and application process, contact a trademark professional at Quick Off the Mark.

The steps to applying are:

A trademark search is essential if you wish to register a trademark in Australia. This search will determine whether your mark conflicts with other trademarks within your industry. Trademark searches must be comprehensive enough to reveal marks that are not only identical, but similar in singular elements. Even a small similarity could warrant legal action.

Ensure that your search terms are broad and all encompassing. You will need to break down every part of your trademark to analyse the results individually. IP Australia provides you with a number of tutorials and tools for searching, but you will also have to conduct a common law search of other databases, directories, and trade magazines to analyse marks that are not yet included on the Trademark Register,

Quick Off the Mark offers you the service of a FREE trademark search.

Once you have determined that your mark is available for use, you must complete your application, including the nomination of the appropriate goods and services classes. These classes will determine exactly what you can and cannot use your mark in conjunction with, so you must be sure to select the right classes. Once your application is submitted, you cannot add or retract classes.

Trademark Examination

Your application will be examined by an IP Australia professional after a period of approximately three months. Once the examination is complete, you will either receive a letter of acceptance or an adverse report.

An adverse report is not a letter of rejection, but rather a letter detailing amendments that must be made before you can register your mark. Perhaps your examiner does not think that your selection of classes is correct, or your description is not detailed enough. A trademark professional can assist you in responding to an adverse report, particularly when the matter of amendment is complex.

Trademark Opposition

To register a trademark in Australia, you mark must first endure a period of opposition. This occurs once you receive a letter of acceptance or once your adverse report has been overcome. During this period, other traders can oppose your formal registration if they believe that your mark infringes on their own or causes unfair competition.

It is unlikely that you will be challenged at this point of the registration process.

Trademark Registration

Once you pass through the opposition period unscathed, your trademark will be formally registered. You will be issued with a Certificate of Registration upon the payment of your final registration fee. You can begin to use the ® symbol with your mark to advertise your status as a registered trademark holder, and you can begin to actively exercise your rights as a trademark holder. You can:

  • Use your mark exclusively within the marketplace
  • Take legal action against infringers
  • Prevent applications from registering a similar trademark
  • Sell or license your trademark to other traders

For further information, or to register your trademark, please contact us at Quick Off the Mark. We are always happy to help you with your enquiries.

BIO:

Quick Off the Mark® is a division of Mark My Words Trademark Services Pty Ltd (MMW). MMW was founded in 2011 and is headed by Jacqui Pryor, a registered trade marks attorney with more than 16 years experience.

In 2015 MMW acquired Quick Off the Mark®, which is a fast and affordable Australian trademark registration service. Quick Off the Mark® offers fixed fees that are affordable to help Australian businesses register their trademarks.

Disclaimer – The advice provided in this blog is general advice only. It has been prepared without taking into account your business objectives, legal situation or needs. Before acting on this advice you should consider the appropriateness of the advice, having regard to your own objectives, legal situation and needs.