You have the name on your website, your invoices and your packaging. Customers search for it, recommend it and come back to it. That is the point where a name stops being a label and becomes part of the value of your business, and it is the point where registering it as a trade mark starts to make commercial sense.
Registering a trade mark for a name gives you a recorded, enforceable right to use that name in Australia for the goods and services you nominate. The process is run by IP Australia under the Trade Marks Act 1995 (Cth) (the Act), takes at least seven months from start to finish and, once granted, lasts ten years from your filing date. It is worth being clear at the outset about what the process does not do. Registering a business name with ASIC is a different exercise that lets you trade under the name but does not, by itself, give you exclusive rights in it. And there is no way to "patent" a name: patents protect inventions, while trade marks protect the signs customers use to recognise you. If what you want is exclusive rights in your brand name, the application process below is the path.
Before you apply: what you'll need
The application itself is a form and a fee, but getting it right the first time depends on six things being settled before you log in to file.
- A name you use or intend to use: you must claim to be the owner of the mark and be using it, or intend to use it, for your goods or services when you apply (s 27(1) of the Act). A mark filed for goods or services you have no real intention of trading in is vulnerable to challenge later.
- A decision on who owns the mark: you can apply as an individual, so you do not need to be a company. The Act requires the applicant to be a person with legal personality (s 27(2)(c)), and individuals and companies qualify. If the mark will really belong to your company, file it in the company's name from the start. Changing the owner after filing means recording an assignment and paying fees.
- A decision on what you are registering: the words alone (a word mark), the logo (a device mark) or both. The Act defines a sign to include a letter, word, name, device, shape, colour, sound or scent (s 6), so a name is registrable in its own right.
- A list of the classes that cover what you sell: trade marks are registered for nominated goods and services grouped into 45 classes, and your protection extends only to the classes you select. If you run an online skincare brand, for example, you may need a class for the cosmetics themselves and another for the retail services you provide around them.
- The filing fees: a standard online application costs $250 per class if you use IP Australia's picklist, and $400 per class if you draft your own description. TM Headstart, the pre-application service, costs a minimum of $330.
- Seven months of patience: the shortest realistic path from filing to registration is about seven months, and objections or opposition will stretch that.
Two of these trip people up more than the rest: the classes you choose and the owner you name. Both can be fixed after filing, but fixing them costs time and money. The third, the name itself, determines whether the application succeeds at all, which is why the first step below comes before you spend a cent.
How to register a trade mark for a name
Step 1: Search the register for conflicting marks
Before you file, search the trade marks register, which is free to search online through IP Australia's Australian Trade Mark Search. You are looking for marks that are substantially identical or deceptively similar to yours and that cover similar goods or closely related services with an earlier priority date, because the Act requires your application to be rejected in those circumstances (s 44).
Similarity matters, not just identity. A mark can be deceptively similar if it looks, sounds or means much the same as yours, and pending applications count as much as registered marks. A Google search, an ASIC business name check or a domain name check will not reveal what the register holds, and a name that is not yet registered can still block you once you file.
If the search shows a conflict, you have options rather than a dead end: choose a different name, narrow the goods and services you apply for, or proceed knowing that the conflict may surface at examination or opposition. A professional clearance search adds a layer of confidence, because it assesses how an examiner is likely to apply the distinctiveness and conflict tests to your specific name and classes.
Step 2: Lodge the application with IP Australia
You file online through IP Australia's online services. There are two paths, and the choice affects both price and risk.
- Standard application: $250 per class using the picklist, a searchable list of more than 60,000 approved goods and services descriptions across 45 classes, or $400 per class if you write your own description. You file, pay and wait for examination.
- TM Headstart: $200 to submit a pre-application, then $130 to convert to a standard application once you are happy with the examiner's indicative assessment, a minimum of $330 in total. You typically get the assessment within days and have a short window to adjust the application in response. It is a sensible route for first-time applicants, because it surfaces objections before you have committed to the full application fee.
Whichever path you choose, the application must include a representation of the mark and specify the goods and services you want it registered for (s 27(3) of the Act), and it must be filed by a person with legal personality (s 27(2)(c)), which means an individual or a company, for example.
The filing date matters. It becomes your priority date, which means anyone who files a conflicting application after you will generally lose to you, and anyone who filed before you can block yours. There is no advantage in delaying once you have settled on a name. IP Australia does not refund fees for a wrongly filed application, so check the classes, the owner and the mark itself before you submit.
Step 3: Get through examination
IP Australia examines the application against the Act. Examination usually takes three to four months from filing, and the service standard is that 85 per cent of first reports issue within 13 weeks and 95 per cent within 18 weeks. If the examiner is satisfied, the application is accepted. If not, you receive a report setting out the objections, and you have a set period to respond, amend the application or request a hearing.
Two objections account for most rejections.
- The mark is not capable of distinguishing your goods or services (s 41): Names that are purely descriptive, such as "Sydney Plumbers" for plumbing services, or generic, such as "Coffee Shop" for a cafe, fail the distinctiveness test because they are not inherently adapted to distinguish your business from others. A name that is not inherently distinctive can still be registered if you can show it had become distinctive through use before your filing date, but that is an evidentiary exercise. Distinctive, invented or arbitrary names are the easiest to register and the easiest to enforce.
- The mark conflicts with an earlier mark (s 44): If your mark is substantially identical or deceptively similar to an earlier registered mark or pending application for similar goods or closely related services, the application must be rejected. This is where the pre-filing search pays for itself.
If you have a genuine commercial reason to move faster, such as a launch date, you can apply for expedited examination, but the minimum period from filing to registration stays at seven months.
Step 4: Wait out the two-month opposition window
Once the application is accepted, IP Australia advertises it in the Australian Official Journal of Trade Marks and on the Australian Trade Mark Search for two months. During that window, anyone can oppose the registration by filing a notice of opposition (s 52 of the Act). Oppositions are most commonly brought by owners of similar marks who believe your registration would damage them, or by people who claim prior use of the name.
Most accepted applications are never opposed, but if one is, the process slows down. The parties file evidence, and the dispute may go to a hearing before the Registrar before a decision is made. Many opposition disputes settle in the meantime. If your mark is opposed, professional representation matters more than at any other point in the process.
Step 5: Register the mark and keep it alive
If no opposition is filed within the window, IP Australia registers the mark and records it on the register. Registration gives you the exclusive right to use the mark in Australia for the goods and services in your registration, and it runs for ten years from your filing date.
Registration is not a set-and-forget exercise, and two obligations deserve attention.
- Renewal: the registration must be renewed every ten years (s 77 of the Act). A late renewal is possible within six months after the registration expires (s 79), but it costs more and risks a gap in protection. Mark the renewal date in your calendar or instruct a professional to manage it.
- Use: a third party can apply to remove a mark that has not been used in good faith for the three years ending one month before the removal application (s 92(4)(b)), and the registered owner carries the burden of proving use (s 100). Keep dated evidence of genuine use: invoices, packaging, advertising and website screenshots. If you stop using the mark for some goods, you can lose it for those goods.
As the business grows into new products or services, review whether your registration covers them. Adding classes after filing is possible but expensive, and in some cases you will need a fresh application.
Where applicants get held up
Most delays and wasted fees trace back to one of four mistakes, and all of them are avoidable with the right preparation.
- Filing before clearing the register: The application is examined against marks you have never heard of, and a conflict under s 44 means rejection and a wasted fee. Search first, and take advice if the result is unclear.
- Choosing a descriptive name: Descriptive names attract s 41 objections that are hard to overcome without a history of use. A distinctive name registers cleanly and is far easier to enforce against copycats.
- Getting the classes wrong: Protection extends only to the classes you nominated. Miss a class you actually trade in and your registration does not cover it, and adding it later costs $450 per class.
- Missing deadlines: Response periods, the two-month opposition window and renewals all have hard dates. A missed renewal can be repaired within six months of expiry, but a mark removed for non-use has to be applied for again from scratch.
When a trade marks lawyer is worth the cost
The application can be lodged without a lawyer, and many small businesses file successfully on their own. Professional help earns its fee at the decision points rather than at the form-filling.
A trade marks lawyer or attorney can run a proper clearance search and advise on how the distinctiveness and conflict tests apply to your name, recommend the classes that cover what you trade in now and realistically next, draft the specification so it is broad enough without overreaching, manage the application through examination and respond to examiners' reports, act in opposition proceedings, record assignments and licences when ownership changes, and monitor renewals and non-use risk.
The situations where advice is close to essential are these: before filing, if the clearance search shows anything similar; if the examiner objects; if your application is opposed; and if the brand is central to a capital raise or a sale, because the other side's lawyers will scrutinise your trade mark in due diligence.
The step that decides whether your application succeeds
The step that decides whether your application succeeds is the assessment you do before you file: whether the name is distinctive enough to pass s 41 and clear of conflicting marks under s 44. Everything after that is waiting, deadlines and fees. File a name that is descriptive or already taken and you get an objection, a spent fee and a restart. File a distinctive, cleared name and the process is mostly a matter of patience.
The process in short: clear the name against the register, lodge an application with IP Australia at $250 per class, survive examination and the two-month opposition window, then keep the mark alive through genuine use and ten-yearly renewal. A registered business name is not a trade mark, a patent is not available for a name, and the ten-year term only means something if you use the mark and monitor it. None of this requires a lawyer, but the decisions around it benefit from one, and getting those decisions right is what turns a name into a protectable asset.