Registering your business name and logo as a trade mark is an effective way of protecting your brand’s intellectual property (IP). To do so, you must complete a trade mark registration via IP Australia. Once you submit an application for registration, IP Australia conducts an examination process to ensure it contains the correct information and meets legal requirements. Making mistakes can be costly, as you may have to re-submit your entire application if it contains errors. Therefore, it is important to ensure you appropriately fill out the registration application. Below, we set out the process and steps to follow when applying to register a trade mark.
Determine What Classes Apply To Your Trade Mark
One of the first things IP Australia will examine is whether you have listed your trade mark under the correct class(es) on your application. There are 45 classes of goods and services available to choose from, so it’s important to do your homework and choose appropriately.
IP Australia may reject your application if you have chosen the wrong classes or classes that don’t actually match your business.
For example, consider Jen, a clothes manufacturer who wants to register a logo trade mark. Typically, her claim would fall under Class 25 (Clothing), as she makes and sells her own clothes. But, she can also choose Class 35 (Retail Services) if she wants to open her own shop and sell other people’s clothes, along with her own. If she only wants to make and sell her own clothes but chooses Class 35 on her application, IP Australia may reject it, because she didn’t select the correct class for her trade mark.
To reduce the possibility of choosing the wrong class, use the Trade Marks Classification Search. You can enter keywords describing the nature of your business, products, or services, that are then matched with possible classes.
Check If Your Trade Mark is Available
When examining your application, IP Australia will check to see if there any already registered trade marks that are identical or confusingly similar to yours. To avoid IP Australia rejecting your application on this ground, conduct a detailed search to ensure there are no similar registered, or pending trade marks before applying.
The Australian Trade Marks Search (ATMS) is a commonly used search tool that can help you do this. Simply enter your desired trade mark to search all trade marks in Australia.Be sure to also search for slight variations of your trade mark, including common misspellings, parts of words, and words that sound similar. When searching for images, consider images that look similar. You can adjust the search settings to help you.
If you find a similar existing trade mark, you may have to change your desired trade mark to something more distinctive before applying for trade mark registration. Otherwise, IP Australia may reject your trade mark application. So, while conducting a search can be time-consuming, it saves you the hassle and cost of making another application.
Lodge Your Application
Once you have identified the appropriate classes of goods and services and conducted thorough searches, you can lodge your application. There are two ways to do this.
1. Using eServices
eServices is IP Australia’s standard online application process. Users can log on, complete forms, attach files, and save progress. As part of the application process, you will need to provide:
- your name/ownership details and contact details;
- a representation of the trade mark;
- a description of the goods and services that will apply to your trade mark;
- a list of the classes you are applying for;
- any translations of your trade mark that may be in another language; and
- the filing fee.
2. Using TM Headstart
Alternatively, you can apply online through TM Headstart (pre-application service). The benefit of doing so is that you can ask for an assessment of the likely success of your application before registration, 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.
Remember, once you file your trade mark application, you can’t substantially amend your trade mark or nominated classes. Requesting an assessment can be an effective way to fix errors before filing an official application, saving you money from having to re-apply in the long run.
Read the Examination Report
IP Australia examiners generally take three to four months to examine and assess your application. If your application doesn’t meet the legislative requirements, you’ll receive an Adverse Examination Report that outlines your application’s problems and the reasoning behind the examiner’s decision about your application. There are two possible outcomes following a report:
- The problems result in a rejection of your application. You’ll then need to file a completely new application, free of errors, to register your trade mark.
- The report may suggest options for overcoming those problems. You can contact the examiner to discuss your application and how best to proceed with it. You then have 15 months from receiving the examination report to respond to any application issues in writing and have your application accepted.
Doing your homework before registering a trade mark will go a long way to ensuring your application is completed correctly. IP Australia will examine your application in detail, so it is crucial to identify the appropriate classes of goods and services your trademark will apply to, and conduct comprehensive trade mark searches beforehand. The TM Headstart (pre-application service) can also help you correct any mistakes you might have made, before making a formal registration application. If your application doesn’t meet legislative requirements, you’ll receive an examination report that details the problems.
If you’re unsure about any of the steps involved or would like advice on the process of registration, get in touch withLegalVision’s trade mark lawyers on 1300 544 755.
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