As a business owner, consider ways to protect your brand’s intellectual property (IP). To do this, you will likely need to use IP Australia. IP Australia is a government agency that registers intellectual property rights in Australia. You can register trade marks through IP Australia, in addition to other IP rights, such as:
- patents;
- designs; and
- plant breeder’s rights.
This article will discuss how to apply to register a trade mark through IP Australia and what to expect regarding the requirements, application process and fees.
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What Can I Register as a Trade Mark?
A trade mark is a sign that promotes your business in the marketplace. Most common examples of this are business names and logos, but other signs can include:
- names of products or services;
- slogans;
- icons;
- shapes; and
- more.
What are the Requirements?
Once you have decided which sign you would like to protect, you must ensure that the sign meets the requirements set by IP Australia. We recommend that you engage a trade mark lawyer who can assist you with this process, although you can choose to file your trade mark on your own.
Before you apply for a trade mark, you need to consider a few key things. We explore these below.
Does Your Trade Mark Describe the Goods and Services You Offer?
IP Australia is likely to object to registering trade marks that are descriptive of your goods/services. For example, the business name ‘THE BEST DRY CLEANERS’ would be too descriptive to be inherently registrable.
Is Your Trade Mark Too Generic?
Similar to the descriptiveness issue above, generic trade marks are likely to be rejected by IP Australia. For example, ‘BREAKY CAFE’ may be too generic due to how common the term ‘BREAKY’ is in Australia.
What Classes of Goods and Services Does Your Business Fall Into?
As part of the application process, IP Australia will need you to list the classes of goods and services your business provides. For example, class 3 covers cosmetics, class 25 covers clothing, and so on. You can use this search tool on the IP Australia website to see which classes apply for your business.
Is Your Mark Similar or Identical to Another Registered or Pending Trade Mark?
IP Australia will also object to your application if your trade mark is the same or similar to an existing trade mark on the register. You can use the TM Checker tool or this quick search tool to see whether others have registered your trademark by inputting key search terms or uploading an image, such as a logo.
Continue reading this article below the formApplying for a Trade Mark
The Headstart application process in Australia is a two-stage process, involving a:
- headstart application (5 business days); and
- formal application (approximately 7.5 months, if there are no issues).
The first stage is the ‘Headstart’ application, IP Australia’s pre-application service. The Headstart process is beneficial because IP Australia will provide you with feedback on the prospects of success of your application within five business days. If you receive a clear report, then there are likely to be no issues in moving ahead to your formal application. However, if IP Australia has indicated potential issues with your application, it may be best to speak to a trade mark lawyer before proceeding.
The second stage is the formal application process, where IP Australia will more formally assess your trade mark based on the abovementioned requirements. If accepted, your application then also needs to go through an opposition period before it can be registered. This process takes approximately seven and a half months. If there are no objections, your trade mark will be registered. However, suppose you receive an objection by an examiner or a third party opposing your application. In that case, we encourage you to speak with a trade mark lawyer to discuss your options for proceeding.
What are the Fees?
The costs for filing a trade mark with IP Australia depend on the number of classes of protection you are applying for. For a Headstart application, these fees are currently $330.00 per class of goods or services per application. Since these fees are paid directly to IP Australia, the costs for the assistance of a trade mark lawyer will be separate to this.
Key Takeaways
IP Australia is the government agency which administers intellectual property rights, such as trade marks. Before applying for a trade mark, it is essential to consider the requirements set out by IP Australia and be aware of the application process and fees.
If you are looking to protect your trade mark, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
To maximise your brand’s protection, we recommend registering each sign you use to represent your business.
Oppositions are rare. According to IP Australia, less than 5% of applications are opposed.
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