Many people think registering a trade mark is an instant process. Imagine, an intellectual property right at the click of a button and the payment of a fee. But registering your trade mark requires more than completing your application and receiving your certificate of registration. Understanding the trade mark process and the steps involved can assist you to make more informed decisions about what trade mark to apply for and when, as well as the considerations you should take into account when deciding.
Before even thinking about IP Australia and the trade mark registration process, ensure you first require trade mark registration. Although this may seem obvious, we have many people ask whether they need their designed logo when they file the application. The answer is yes! If you don’t have your logo ready at the time of filing, the examiners won’t know what to assess. Your logo can be one you are currently using in your business, or it can be a mark that you are planning to use.
Importantly, trade mark registration isn’t a blanket exclusive right to use the mark and is limited to the types of goods and services your business offers. For example, although you can register your name, you will still need to identify the goods and services related to your use of your name.
It’s prudent first to search and see whether other businesses are using an identical or very similar mark to yours. A good place to start is Google, and the Yellow Pages, or you can use IP Australia’s trade marks register search function, ATMOSS. If you do find another business using the same business name, slogan or logo, you should ask yourself the following:
- Are they offering the same goods and services (i.e. will they be competing with my business)?
- Similarly, are they offering their goods and services in the same area/jurisdiction as me?
- Does the other business have a registered trade mark?
- How long has the other business been operating? How long have I been operating? Who used it first?
- Are either of us likely able to register our mark?
Depending on how long you have been operating your business, there are certain situations where you may consider changing your name or your logo to increase your chances of success.
There is also another option for checking the availability and registrability of your trade mark. IP Australia offers a service called TM Headstart. It is not a full application to register the mark, but IP Australia will let you know whether there will be any issues regarding your mark.
File a ™ Headstart Request
IP Australia will provide you with a report within five business days of your filing the ™ Headstart Request. If they find any similar or identical marks on the register, they will let you know, or if your trade mark does not meet other requirements for registration, the report will set out steps you can take to make your application more successful.
Convert, Make Changes to or Abandon Your Headstart Request
Once you receive the report, you have five business days in which to respond in one of three ways.
- You can convert the Headstart Request to a full application. You should do this where the report comes back clear or if you can easily overcome the issues raised at the examination stage. Your trade mark’s priority date becomes the date on which you convert the Headstart request to a full application.
- You can make certain changes to the Headstart Request and submit again to IP Australia without paying an additional fee. Some changes, however, such as changing the mark itself (known as the representation), will be considered a new request and will require another fee.
- Finally, if you decide you do not wish to proceed with a full application, you do not need to respond, and you will have abandoned your Headstart request. If you decide to apply for the same trade mark in the future, you will need to start again.
There are two ways to begin the application process:
- Through the Headstart service described above; or
- Lodging an application in the first instance.
You can lodge an application online through IP Australia’s eServices. You will need to provide the mark you want to register, the owner’s name and address, and the goods and services associated with the mark. Once filed, your application has a priority date which gives your mark preference over other applications filed after the date.
This stage is the longest in the trade mark process. IP Australia examines the application and will issue you with a formal report letting you know whether it has accepted your mark or whether there are issues that prevent registration.
Notice of Early Acceptance and First Examination Adverse Reports
If you began your application with a Headstart Request, it is likely you will hear back from IP Australia earlier. IP Australia usually does a ‘top-up’ search after you have converted your Headstart Request and you may receive the report as early as one month after lodging the application.
The standard time from filing date to notice of acceptance is five months for IP Australia to examine your application and notify you of their approval.
If there are any objections to your application, IP Australia will issue you with a First Examination Report. The report will go into detail about the issues and what you will need to do to overcome them. You will need to assess whether you can overcome the objections raised. You are given 15 months to respond to the Report, and can request extensions if necessary.
If your response to the report is successful and the examiner is convinced, they will accept your application. If there are still outstanding objections, you will be issued with another adverse report.
Once you have received notification that IP Australia has accepted your application, your trade mark is considered to have passed the examination stage.
Advertisement and Opposition
IP Australia will publish the details of your trade mark on the trade marks register and in the Trade Marks Journal. There is a two month period called the opposition period where third parties can oppose your application. If your mark is unopposed, you can proceed to registration. If someone raises an objection, you will need to respond.
You’ve passed all the hurdles of examination and opposition. Congratulations – it’s finally time to register! You can usually pay the registration fee from the time you receive notification of acceptance, and IP Australia will register the mark once the opposition period is over.
You will receive a date on which your registration fee is due, usually seven and a half months after your filing date. If you haven’t paid by that date, you can still register the mark, but you will incur a late fee. If you still haven’t paid the fee after six months, your application will lapse.
Although it takes seven and a half months to register a trade mark, once registered your trade mark is considered to have been registered from the date of filing.
It does take a while to register a trade mark, but the earlier you get that application in, the better. If you are concerned about the likelihood for successful registration, use the Headstart service so you have more certainty rather than waiting five months. It’s a useful tactic, particularly if you are spending money on branding and building your business.
Consider the ‘Address for Service’ and your preferred contact method for your application carefully, because IP Australia will send all notices including relevant fees and deadlines to that address. You don’t want to miss a major deadline and risk losing your priority or paying extra. If you have any questions, get in touch with our trade mark lawyers on 1300 544 755.
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