Your brand is an important business asset. It helps you to stand out from competitors and allows customers to recognise your business and products. In order to stop competitors profiting from your brand, you should register your key branding as a trade mark. A trade mark gives your business the exclusive rights to use your brand in relation to the goods or services that you provide. This article will explain how to register a trade mark with Intellectual Property Australia (IP Australia) in four easy steps.

1. Identify Your Business’ Trade Mark(s)

Whether you have just started your business or have been trading for some time, it is always a good business decision to protect your brand with trade mark registration. 

Trade marks are a type of intellectual property. They allow you to take legal action to prevent others from using the protected parts of your brand. 

A trade mark can take many forms. For example, your business may be able to register distinctive:

  • logos;
  • letters;
  • numbers;
  • words;
  • phrases;
  • shapes;
  • smells;
  • packaging;
  • sounds;
  • movements; and
  • pictures.

Your business may have more than one trade mark. For example, consider some of the different trade marks used by well-known brands:

Brand Name McDonald’s Starbucks Nike
Trade Marked Logo
Trade Marked Tagline  I’m Lovin’ It Starbucks Rewards Just Do It
Trade Marked Product Name  Big Mac Frappucino  Dri-FIT

2. Classify Your Trade Mark Into One of the 45 Classes

When you apply to register your trade mark, you must provide a description of the goods and services you provide. 

In Australia, you can use the trade marks classification search to determine the relevant goods and services class. There are 45 different classes. The classification search provides a guide to the types of goods and services that fall into each class. Although the search includes over 60,000 goods and services, it is not an exhaustive list. If you cannot find an appropriate description for your goods or services, you may need to create a custom description.

To use the Australian classification list, search for keywords that describe your business. Some keyword searches will return many results under different classes. Using the subheadings a reference, you should be able to find the items in the correct class which apply to your business.

To help determine the correct class, you should consider:

  • the nature of your products and services;
  • what your business does;
  • how your business generates income; and
  • what you are known for by your customers or clients.

You may wish to register for multiple classes to gain additional protection, but you should avoid overstretching your application. Applying for too many classes may cause problems in the long run, as competitors can apply to remove trademarks that you are not actively using.

It is important to get this step right before you begin your application process. Once you lodge your application, you can only receive protection in the classes of goods and services you selected initially.

3. Conduct a Trademark Search

Before you register a trade mark, you should make sure that it is available for use. You will need to find out whether: 

  • another trader is currently using your brand in relation to similar goods and services; and
  • your trade mark is available to register.

Are You the First to Use the Trade Mark?

Even if a business has not registered a trade mark, they may have a legal claim to a mark if they can show that their business has been using it. If you are in the early stages of developing your brand and trade mark, it is a good idea to conduct searches for others who may be using your brand name in Australia. Your potential trademark must not infringe on someone’s protected rights. To confirm no other traders use your brand in relation to similar or identical goods or services, you may wish to search through: 

  • Google; 
  • social media sites;
  • the yellow pages; and 
  • the Australian Securities and Investment Commission (ASIC). 

Is the Trade Mark Available for Registration?

Next, you should consider whether your brand is able to be registered as a trade mark in Australia. Generally, this will depend on whether:

  • there is already a similar trade mark on the trade mark register; and
  • your brand name merely describes the goods and services you provide, in which case other traders in your industry may need to use it to describe their goods and services.

Conducting a comprehensive trade mark search can reveal previously registered marks in Australia and trade marks that may be considered identical or deceptively similar to your brand.

You can conduct a trade mark registrability search through the Australian trade mark database. It is important to note is that the search results will need to be considered and interpreted. 

Quick Search or Advanced Search?

If you know what you are looking for, you can perform a quick search of the database. The quick search will find results based on:

  • trade mark words; 
  • owner names;
  • trade mark numbers; and
  • international registration numbers 

A quick search may be useful, but an advanced search will provide more comprehensive results. Advanced searches will return more accurate and diverse results. You can search for: 

  • words;
  • phrases;
  • images;
  • classification;
  • status; and 
  • ownership.

Depending on the range of results you wish to check, you can search for exact words, part terms or fuzzy terms.

4. Apply for Your Trade Mark With IP Australia

You will be able to apply for your proposed trade mark(s) after you have: 

  • identified your trademark;
  • defined the goods and services provided in association with your trade mark; and
  • conducted a thorough online searches.

You can lodge your trade mark application via IP Australia’s online services platform. You will need to provide:

  • the applicant’s details, including contact address;
  • a representation of the trademark;
  • a list of the goods and services you intend to apply for;
  • any translations of your trademark that may be in another language; and
  • the filing fee.

There are two ways to file a trade mark. You can choose to:

  1. file an Australian trade mark application directly; or 
  2. apply for a trade mark headstart application.

A headstart application includes a pre-filing assessment before you file an Australian trade mark application. This may be a better option if you are just starting your business and wish to receive IP Australia’s initial assessment in five business days. You will have the opportunity to amend or discontinue your application if you do not receive a favourable outcome to the pre-filing assessment. 

Key Takeaways

An important part of registering a trademark is completing your due diligence. You should be confident that your application will be successful when you apply. Before making your application to IP Australia, you should: 

  • determine whether you have a trademark;
  • identify the classes of goods and services your trademark will apply to; and 
  • undertake a comprehensive search.

If you need help with registering a trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

About LegalVision: LegalVision is a tech-driven, full-service commercial law firm that uses technology to deliver a faster, better quality and more cost-effective client experience.
Sophie Glover

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