In Short
- Trade mark acceptance is not the same as trade mark registration; further steps are needed before achieving full registration.
- Use the ‘™’ symbol during the pending period, but only use the ‘®’ symbol once your trade mark is officially registered.
- Be aware of the opposition period, during which third parties can challenge your application.
Tips for Businesses
Once your trade mark is accepted, actively build your brand reputation while the application is pending. Use the ‘™’ symbol and monitor for similar trade marks on the register. Consider international protection through the Madrid Protocol if you plan to expand overseas. Seek legal advice if any opposition arises.
Receiving confirmation that your trade mark has been accepted can be a very exciting milestone for you and your business. This means IP Australia has examined your application and considers it capable of being registered as a trade mark. Importantly, however, trade mark acceptance does not equal trade mark registration.
This article will explore:
- what happens once IP Australia accepts your trade mark; and
- what steps you can take following this.
‘Accepted: Awaiting Publication
If the current status of your trade mark application is ‘Accepted: Awaiting Publication’, IP Australia has examined your application. This is the government body that reviews and administers all trade mark applications. IP Australia will check your application to make sure it:
- complies with legislative prerequisites for trade mark registration;
- contains all correct information; and
- meets formality requirements.
IP Australia accepting your trade mark application is a significant milestone. Many applicants go through a timely and costly process to have their applications accepted.
IP Australia may accept your trade mark application without raising any objections. A notice of acceptance will usually be issued within three months. Once accepted, your trade mark will retain this status for approximately five months from the filing date. This allows international trade mark applicants to apply to Australia and claim priority based on their international application. All trade mark applicants have 6 months from their filing date in their base country to be able to take this course of action. This means that during this time, an overseas applicant may file an application for the same trade mark as you and be able to claim an earlier filing date and, therefore, obtain ‘priority’ over your application.
Alternatively, IP Australia may accept your application after you overcome any issues raised in an examination report. As long as it has been at least five months since you filed your application, it will progress directly to the next stage once it is accepted.
‘Accepted: In Opposition Period’
Your application will then progress through a two-month opposition period. During this time, the Australian Trade Marks Journal advertises your trade mark. Third parties then can oppose your application if they have a valid reason. For example, a trader may oppose your application for a particular name they have been using unregistered for a substantial time. This would be because it could cause confusion in the marketplace if you could obtain an exclusive right to this name.
If any third party files an opposition to your application, you can defend it. This party may send you a Notice of Intention to Oppose your application. In this case, you should seek advice from a trade mark lawyer or attorney. Opposition proceedings can be complex, and deadlines for submitting a defence to the opposition are strict.
Continue reading this article below the form‘Registered’: Registered/Protected
After the opposition period has expired, your trade mark application will progress to registration approximately 14 days later. You will then receive a registration certificate. Your trade mark registration is then an enforceable intellectual property right. Notably, your registration rights are backdated to your filing date, or ‘priority date’.
Suppose a third party infringed upon your trade mark registration while your application was pending and proceeding through the examination and opposition periods. Here, you might be able to:
- take retrospective action against that third party to stop them from continuing the infringing activity; and
- potentially claim compensation for their infringement to date.
Your trade mark registration must be renewed every 10 years to remain a registered enforceable right. To ensure you can enjoy continued trade mark protection, meet the renewal deadlines every 10 years. This will help you avoid your trade mark registration lapsing and IP Australia removing it from the register.
Your business’ brand represents your values, identity and reputation. Learn how to create a successful brand and protect it.
Using Your Trade Mark While It is Pending
Before your trade mark progresses to registration, you must not use the ® symbol next to your trade mark. It is an offence to use this symbol if you do not have a current and valid trade mark registration. Instead, you should use the ‘™’ symbol while your application is pending. Your application status will be publicly available to view on the Australian Trade Mark Register. Accordingly, ensure you are not representing you have a registered trade mark before receiving your registration certificate.
If you are committed to your brand and have already started to build up a reputation in connection with your trade mark, it can be helpful to continue to build up evidence of public use of your trade mark. While your application is pending, it can also be a good idea to monitor the trade marks register for marks similar to yours. You can oppose other trade mark applications during their opposition period. You do not have to have a registered trade mark yourself to oppose another’s application.
International Trade Mark Applications and the Madrid Protocol
If your trade mark application has been accepted in Australia, it is worth exploring international protection at this stage. The Paris Convention provides an additional benefit for Australian trade mark owners seeking international protection. This agreement allows you to leverage the priority date of their Australian trade mark when filing internationally. Specifically, if an international application is lodged within six months of the Australian filing, you can claim the earlier Australian priority date for your international application. This can be particularly advantageous in establishing earlier rights in foreign markets.
Australia’s participation in the Madrid Protocol offers businesses an efficient pathway for international trade mark protection. This system, administered by the World Intellectual Property Organisation (WIPO), allows trade mark owners to file a single application to seek protection in multiple countries simultaneously. For Australian businesses looking to expand globally, this presents a cost-effective alternative to filing separate national applications in each desired jurisdiction.
Key Takeaways
Trade mark acceptance is not the same as trade mark registration. You should be careful not to confuse the two. Additionally, know that your trade mark must progress through several additional stages before it becomes a registered enforceable right. Equipping yourself with a thorough understanding of the status of your trade mark is a great start. If third parties start getting involved, such as by opposing your application, it is best to speak with an experienced IP lawyer.
If you have any questions about your trade mark, our team of experienced intellectual property 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
If IP Australia accepts your trade mark, it complies with legislative prerequisites for trade mark registration, contains all the correct information, and complies with formal requirements.
When your trade mark is accepted, you can build your brand reputation. This includes using the ‘™’ symbol next to your trade mark. However, it is an offence to use the ® symbol if your trade mark has not yet progressed to registration.
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