Australian Trade Mark Registration

Trade mark registration provides an exclusive right for the owner to use the trade mark in relation to the designated goods and/or services and prevent others from using the same or similar trade marks to yours. The entire trade mark registration process in Australia spans 4 stages, namely filing an application, examination, publication/opposition and registration. It will take at least 7.5 months where the application proceeds smoothly.

 

Application for Registration

When you apply to register a trade mark, you must provide a description of the goods and/or services you intend to use your trade mark on. These goods or services need to be nominated from one or more ‘classes’ (categories). We will advise you of the number of classes required to be covered by your application before filing your application.

 

Once a trade mark application is filed, it sits in a queue at IP Australia for up to 3 months before being examined (Standard Application). If you wish to have your application examined sooner than others ahead of you in the queue, ask us to file either an expedited examination request or a Fast Track Application.

 

Expedited Examination Request

If you have legal or commercial reasons to request your trade mark examined sooner, e.g. pressing launch dates or infringement issues with a competitor, we can request for expedited examination with IP Australia. Once approved, it will shorten the waiting period so you will know the outcome of examination in 4-5 weeks instead of 3-4 months.

 

Fast Track Application

A Fast Track application, also called a TM Headstart Application enables us to obtain a confidential assessment from IP Australia within 5 business days. This includes whether your trade mark would encounter any official objections on the perspective of an examiner at the Trade Marks Office.

 

If the initial assessment is positive, the application can be formally confirmed as being filed publicly and an early notice of acceptance is likely to be issued in a couple of weeks. If there was any problem found during the initial assessment, you may amend your trade mark and/or designated goods or services before it being filed publicly (it may subject to additional costs). We will also have an opportunity to have a telephone interview with the examiner to find ways to overcome any barriers you may face with your application at this stage.

Examination

Every Australian trade mark application is examined by the Trade Marks Office to ensure it meets the requirements for registrability in Australia. Not all trade mark applications go smoothly. If there is any objection raised by an examiner during the examination process, it must be overcome within 15 months from the date of first adverse report unless the deadline is extended.

 

As your address for service, we will receive all correspondence from IP Australia on your behalf. In the event an adverse report is issued, we will review and report it to you with our recommendation at no charge. Objections may be simple to overcome or quite complex requiring legal submissions. In any events, we will let you know how much it would cost in responding to an adverse report.

 

If you have already received an adverse report on your existing trade mark application, please send us an email with a copy of the report and your contact details to ip@hhlaw.com.au. We are always happy to review and provide our preliminary advice at no charge.

Publication/Opposition

Once the application has been accepted, the trade mark details are advertised in the official Trademark Journal for a 2 month period during which a third party can oppose it. We will monitor the progress of your application and will let you know immediately if we receive a notice of intention to oppose in respect of your trade mark application.

 

If you are interested in opposing someone else’s accepted trade mark or if you have received a Notice of Intention to Oppose on your trade mark application, please refer to our Opposition & Cancellation services.

Registration

If there is no opposition, then the trade mark application will be registered automatically if the application was filed on or after 10 October 2016. A Certificate of Trade Mark Registration is then issued by IP Australia and the trade mark registration lasts for a period of 10 years. It can be renewed indefinitely upon payment of renewal fees every 10 years. As we will remain as your address for service on the Register, your trade mark will be looked after by us properly which gives you peace of mind for the life of the registration.

 

 

Common Questions

Should I use a lawyer or trade mark attorney to register my trade mark?

Engaging a professional to prepare and file your trade mark and monitoring the progress can reduce to likelihood of objections from the Trade Marks Office and opposition from other traders against your application. Incorrect filing or filing with poor specifications may be required to re-file your application. This will cost more and your competitor might even register the same mark faster than you, leading to serious problems for your business.

How much does it cost to file a trade mark application in Australia?

The cost for us to prepare and file a trade mark application is from $450 (including GST and the government fee). Unlike many firms, we do not charge for an additional class. This means you will be only required to pay the government fee for an additional class.