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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 registration as a trade mark. Importantly, however, trade mark acceptance does not equal trade mark registration

This article will explore:

  • what happens after IP Australia accepts your trade mark; and
  • what steps you can take following this. 

‘Accepted: Awaiting Advertisement’

If the current status of your trade mark application is ‘Accepted: awaiting advertisement’, 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: 

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 early after examining it. This process usually takes one month. Alternatively, it may accept your application after overcoming any issues raised in an examination report. Once accepted, your trade mark will retain this status for approximately four months. This allows for international trade mark applicants to be able 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.

During this time, your trade mark status is ‘pending’. You can utilise the ‘™’ symbol next to your trade mark in practice. This can alert competitors to the fact you have a trade mark application pending. It also shows that you consider your trade mark a legitimate badge of origin of your business.

‘Accepted: In Opposition Period’

Your application will then progress through a two-month opposition period. During this, the Australian Trade Marks Journal advertises your trade mark. Third parties then have an opportunity to oppose your application if they have a valid reason to. For example, a trader may oppose your application for a particular name they have been using unregistered for a substantial time. This would be on the basis that it could cause confusion in the marketplace if you were able to obtain an exclusive right to this name. 

If any third party files an opposition to your application, you will have the opportunity to 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. 

‘Registered’

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 is backdated to your filing date, or ‘priority date’. This means that if a third party was infringing upon your trade mark even while your application was pending and proceeding through the examination and opposition periods, you may 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, make sure you meet the renewal deadlines every 10 years. This will help you avoid your trade mark lapsing and IP Australia removing it from the register.

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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 marks register so you should make sure you are not representing you have a registered trade mark before you receive 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 useful 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 registered for ones similar to yours. You have the opportunity to oppose other trade mark applications in their opposition period and you do not have to have a registered trade mark yourself to oppose another’s application.

Key Takeaways

Trade mark acceptance is not the same as trade mark registration. You should be careful not to confuse the two and should know that your trade mark must progress through a number of 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

What is trade mark acceptance? 

If your trade mark is accepted by IP Australia, this means it complies with legislative prerequisites for trade mark registration, contains all the correct information, and complies with formal requirements. 

What can you do after your trade mark is accepted? 

When your trade mark is accepted, you can start building your brand reputation around it. This includes using the ‘™’ symbol next to your trade mark. However, it is an offence to use the ® symbol if you have not gone through the process of registering your trade mark after it is accepted.

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