By: Bianca Ysabel, Trade Mark Administrator, W3IP Law Pty Ltd
Australia is well-known for its thriving economy, a vibrant culture, and a strong spirit of entrepreneurship. As an individual or business looking to establish a presence in this competitive environment, it is crucial to protect your unique brand identity.
This article will discuss the process of trademark registration in Australia. We will outline the steps involved, examine key considerations, and provide valuable tips to facilitate a successful trademark registration experience.
Contents
1. What is a trademark and why register one?
2. What can be registered as a trademark in Australia?
3. Why can you be refused to register a trademark in Australia?
4. The process of trademark registration in Australia
5. Trademark opposition process in Australia
6. Documents required for the registration of a trademark in Australia
7. Trademark registration fees in Australia
1. What is a trademark and why register one?
A trademark, which is sometimes called a brand, is used to signify that products or services originate from a particular entity or business, or are authorized by that entity or business, or that the products and services are of a particular quality. A trademark may be any ‘sign’ capable of distinguishing the goods or services of one trader from those of other traders.
Here are some advantages of registering a trademark in Australia:
- It proves you own the trademark, so you can legally stop others from using it;
- It’s a good defense if someone else accuses you of infringing on their trademark;
- It deters your competitors from using or registering something similar;
- It tells everyone that you take your intellectual property seriously and your brand is worth something;
- It is a valuable asset that you can sell, assign, or license;
- You usually get Australia-wide rights, so you can ask Australian customs to seize goods that have infringing marks on them;
- When your trade mark is registered, you can use the ® symbol next to your trademark.
2. What can be registered as a trademark in Australia?
In Australia, a trademark may be any ‘sign’ capable of distinguishing the goods or services of one trader from those of other traders. To be registrable, a trademark must satisfy the following two main requirements:
- The trademark must be distinctive or at least capable of becoming distinctive and should not be generic or descriptive of the goods or services;
- The trademark should not be substantially identical or deceptively similar to any earlier trade marks on the register which are pending or registered or otherwise confusingly similar.
The following items can be registered as trademarks in Australia:
- word or phrase
- logo
- picture
- slogan
- aspect of packaging
- color
- shape
- sound
- a smell
- combinations of the above
In Australia, it is essential to accurately categorize the goods and services connected to your trademark for successful registration. This categorization follows the International Classification of Goods and Services, providing consistency in trademark registrations globally.
Moreover, within the Australian context, you have the option to submit a multi-class trademark application. This allows you to register multiple classes of goods and services under a single trademark. However, for each additional class, you will incur an extra fee.
3. Why can you be refused to register a trademark in Australia?
The general scope of the prohibition is as follows:
- Section 39: Prohibited and Prescribed Signs. The central ground for rejection is incorporating signs prohibited by the law.
- Section 40: Graphical representation of a trademark. The application must be rejected if the trademark cannot be represented graphically.
- Section 41: Trademark not capable of distinguishing. A trademark must be rejected if the trademark is not capable of distinguishing the applicant’s goods or services.
- Section 42: Trademarks that are scandalous or contrary to law. The Australian Trade Marks Office must evaluate the mark in the context of the ordinary people it might offend in deciding the merits of each case and also must reject a trademark if it is contrary to legislation.
- Section 43: Trademarks that are likely to deceive or cause confusion. A trademark must be rejected if it has some connotation that would be likely to deceive or cause confusion.
- Section 44: Conflict with other trademarks. There are grounds for rejecting a trademark application if the mark is substantially identical or deceptively similar to another trademark application or registration in respect of similar or closely related goods or services.
If objections are raised by the trademarks examiner, a period of 15 months is allowed to over objections through, for example, submissions or amending the application or submitting evidence of use. Further extensions of time may be permitted if you pay a fee to the Australian Trade Marks Office. Read about 12 easy ways to save money on IP.
4. The process of trademark registration in Australia
The trademark registration process in Australia is a multi-step procedure that involves several stages, such as conducting a trademark search, submitting the application, examination, potential opposition, and finally, receiving the certificate.
Before submitting a trademark application, it’s essential to conduct a comprehensive trademark search. This search helps determine if any existing trademarks are identical or similar to the one you intend to register. The search can be conducted using the Australian Trade Marks Search provided by IP Australia, which contains details about registered trademarks and pending applications, or using a global IP database.
After ensuring your desired trademark is unique, you can proceed to file an application with IP Australia, either online or by mail. You will need to provide the applicant’s details, a clear representation of the trademark, and a list of goods and services associated with the trademark, classified according to the International Classification of Goods and Services.
After submitting the application, IP Australia will conduct an examination to assess whether the trademark complies with the requirements under the Trade Marks Act 1995. The examination process typically takes around 3-4 months. If the examiner identifies any issues, you will receive an examination report, outlining the grounds for rejection and providing a timeframe to address the concerns.
Once the examination is complete and the trademark is accepted, it will be published in the Australian Official Journal of Trade Marks. From the publication date, there is a two-month opposition period, during which third parties can file an opposition against your trademark application if they believe it conflicts with their rights or doesn’t meet the registration criteria.
If no opposition is filed or the opposition is unsuccessful, your trademark will proceed to registration. You will receive a Certificate of Registration, and your trademark will be protected in Australia for an initial period of 10 years. After that, you can renew the registration indefinitely, subject to the payment of renewal fees.
Head Start Fast Track Application
To minimize your risk, we can file a fast-track Electronic Trade Mark Application on your behalf to start the process. This will help avoid some cost and uncertainty in your application in that it provides you with an early assessment of the registrability of your trademarks by the Australian Trade Marks Office. After an application has been filed at IP Australia it will be examined by a trademarks examiner.
Within 5 to 7 business days, the Australian Trade Marks Office will contact us, and you will know the results. We will then come back to you with some options if a negative response is received. This may include replacing a trademark with a new trademark for an extra government fee for each class depending on the outcome of the examiner’s assessment.
5. Trademark opposition process in Australia
During the two months following the acceptance announcement by the Australian Trade Marks Office, anyone can oppose the registration of your trademark. An opposition occurs when someone makes a formal objection against the acceptance of your trademark application.
There are many grounds for an opposition. This typically occurs when someone considers that your trademark is identical or similar to their registered or pending trademark.
After receiving the notice of opposition, the applicant must submit a notice of Intention to defend within 30 days. An applicant in defending opposition proceedings must collate evidence, documentation, and arguments, and defend their trademark through the opposition process where each party provides evidence to support their arguments.
Either party can request a hearing to resolve the issue and make submissions to support their case. The hearing officer will evaluate the evidence and make a decision on whether to register the trademark.
6. Documents required for the registration of a trademark in Australia
The applicant can be an individual, a company, an incorporated club, or association, an incorporated or limited liability partnership, or any combination of these entities. To register a trademark in Australia, you typically need the following documents:
- Trademark application form containing the applicant’s name, address, contact information, and the description of the trademark.
- A clear image or representation of your trademark, which can be in the form of text, a logo, or a combination of both.
- A detailed list of the goods and services that the trademark will cover, categorized according to the Nice Classification system.
- Proof of identity (if applicable).
- Power of Attorney or authorization (if applicable).
- Declaration of use or intent to use specifying that you are currently using or have a genuine intention to use the trademark in connection with the specified goods or services.
- Evidence of prior use (if you’re claiming priority based on prior use).
All documents submitted to the Australian Trade Marks Office should be in English. If any original documents are in a language other than English, you must provide a certified translation of the document into English along with the original document.
7. Trademark registration fees in Australia
| PACKAGE | LEGAL FEE (AUD) | GOVERNMENT FEE (AUD) |
| HSTM APPLICATION (ONE Trade Mark in ONE class) | ||
| Legal Fee | $ 650.00 plus GST | $ 330.00 |
| Additional Classes | $ 300.00 plus GST per class | $ 330.00 per class |
| Additional Related Trade Marks | $ 300.00 plus GST per mark | $ 330.00 per class |
| Amendment of Trade Mark (HSTM) | $ 180.00 plus GST | $ 150.00 per class |
| STANDARD TM APPLICATION (ONE trade mark in ONE class) | ||
| Professional Fee | $ 850.00 plus GST | $ 400.00 per class |
| Additional Classes | $ 300.00 plus GST per class | $ 400.00 per class |
| Additional Related Trade Marks | $ 300.00 plus GST per mark | $ 400.00 per class |
The cost of trademark registration in Australia via the iPNOTE platform starts from as low as $653, which covers all official fees as well as document preparation. Find the best trademark agent in Australia on iPNOTE.
8. Final thoughts
A trademark may be your most valuable marketing tool. Australia offers an efficient trademark registration system and, with the right branding strategy, and through filing a trademark, you will protect your brand, the name of your product or service and help customers distinguish you from your competitors.
Today, particularly with online visibility, it is more important than ever that you allow customers to identify your business as the source of a product or service. With a registered trademark, you can protect your brand and reputation and people can spot and recognize your unique brand identity in a crowded marketplace.
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