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Registering your business name or logo as a trade mark is an effective way of protecting your brand’s intellectual property. Once you apply for registration, IP Australia conducts an examination process to ensure it contains the correct information and meets legal requirements. However, making mistakes can be a costly exercise. This is because you may have to re-submit your entire application if it contains errors. Therefore, it is important to speak to a registered trade mark attorney or lawyer before applying if you are unsure. Below, we set out the process involved with registering a trade mark. 

Decide What Trade Mark To Register

You should apply to register every brand asset that you use to identify your business. This may be, for example, your business name, logo, tagline, or even a catchy jingle you use in your advertisements. Most small businesses will apply to register their name and logo. 

As trade mark applications can be expensive, you may decide to proceed with one or two applications. If that is the case, you should register the brand assets you use the most and those that most customers will interact with.

Conduct A Trade Mark Search

When examining your application for a trade mark, IP Australia will search and review the Australian trade marks register for any identical or similar trade marks. If there appears to be a conflict, IP Australia will issue an adverse examination report against your trade mark. Then, they will give you 15 months to overcome the objections raised. 

To avoid conflict with existing trade marks on the register, it is important to conduct a detailed search of IP Australia’s register. If you are aware of any competitors with a similar trade mark to your intended trade mark, you may have to consider changing your trade mark or evaluating your options. A registered trade mark attorney or lawyer can help with this step, as they will be able to review the trade marks register and weigh up the risks involved with pursuing an application. 

Determine What Classes Apply To Your Trade Mark

When applying for trade mark registration, you must specify which goods and services you provide concerning the trade mark. All goods and services are categorised into groups called ‘classes’. There are 45 classes of goods and services available to choose from, so it is important to choose appropriately. We recommend using IP Australia’s pre-approved list of goods and services. This will help to avoid an objection being raised on the basis that you have chosen goods or services that do not match the appropriate classes.

If you are unsure about how many classes are necessary for your business or which goods and services are relevant, seeking legal advice might be a practical option. 

File Your Application

You can choose to file an application through a legal representative or file on your own. If you choose to file on your own, you have two options.

Standard Trade Mark Application

‘eServices’ is IP Australia’s online portal, which provides users with the ability to create accounts and access trade mark filing services.

Once you have input the relevant details about your application, you can file a standard trade mark application. Upon paying the applicable government fees, you will receive a trade mark filing number. Using this number, you can search your trade mark on IP Australia’s public register to view the details of your application. IP Australia will also periodically update you with the progress of your application through correspondences in your eServices inbox. 

IP Australia will examine a standard application around four to five months after filing. 

‘Headstart’ application

Alternatively, you can apply online through IP Australia’s ™ Headstart pre-application service. The benefit of doing so is that you can request a preliminary assessment before formalising your application, for a fee. 

Your assessment will:

  • give you information on how to correct or improve certain parts of your application;
  • provide further explanation on the registration process; and
  • arrive within five working days from an IP Australia examiner.

You can then choose to formally continue with your trade mark application by paying the Part 2 fee within five working days based on the results in the preliminary assessment.

Remember, once you formally file your trade mark application, you cannot substantially amend your trade mark or nominated classes. 

Meeting The Requirements For Registration

If your application does not meet the stipulated requirements upon examination, you will receive an Adverse Examination Report. This will detail any substantive issues, along with the examiner’s reasoning. For example, the examiner may reference existing trade mark(s) on the register that are considered similar to yours. The report may further suggest options for overcoming any issues highlighted by the examiner. If you can address the issues and provide any required information, the examiner may reconsider their adverse finding and accept your application.

If you receive an Adverse Examination Report, you should contact a lawyer or registered trade mark attorney to discuss strategies, risks and possible outcomes.

Alternatively, suppose your trade mark application meets the relevant requirements. In that case, it will be advertised in the Australian Official Journal of Trade Marks for a two-month period. Third parties have an opportunity to oppose your trade mark registration. If it is not opposed, IP Australia will officially register your trade mark. They will provide you with a Certificate of Registration issued by IP Australia.

Key Takeaways

Conducting research before filing a trade mark application will go a long way to ensuring you file your trade mark correctly. IP Australia will examine your application in detail, so it is crucial to identify the appropriate classes of goods and services and conduct comprehensive trade mark searches beforehand.

If you need help with trade mark registration, 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

What is a ™ Headstart application?

A ™ Headstart application allows you to submit your trade mark application for examination before proceeding to registration. An examiner will assess your application and inform you if it meets the trade mark requirements. They will also inform you of anything you need to change before registration.

What is a trade mark class?

Trade mark classes help determine the scope of your trade mark application. There are 45 classes of goods and services that you can select to file your trade mark under.

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