Your brand is worth protecting, and at some point that means a trade mark application. It usually happens at a specific moment: a launch is coming, a co-founder or investor is asking questions about ownership, or a marketing push is about to put your name in front of the market. You open IP Australia's application and hit the section that stops most founders cold: the goods and services list. The tool for that section is the picklist, a searchable list of more than 60,000 pre-approved descriptions of goods and services arranged across 45 classes.
When you finish, you'll have filed an application that, if it's accepted, gives you a registered trade mark with exclusive rights for the goods and services you listed, running for 10 years from the filing date. What you won't get is protection for the name in the abstract. The scope of your registration is fixed by the items you select, and once you file you can't add goods or services to it. If your list is wrong, fixing it means a new application, a new fee and a new filing date, so it pays to get the list right the first time.
Before you start: what you need in place
Six things need to be in place before you open the application:
- Owner details: the legal entity that will own the mark, whether an individual, a company, or the trustee of a trust. IP Australia treats getting the owner right as one of the first decisions in the process.
- A clear picture of what you sell: your actual products and services today, plus anything realistic on the roadmap for the next year or two.
- A representation of the mark: the word, logo or slogan you're registering, because the application must include a representation of the trade mark.
- A clearance search: an early check of the existing register so you're not filing into a conflict you could have seen coming.
- A genuine intention to use: under s 27 of the Trade Marks Act 1995 (Cth) (the Act), you must be using, or intend to use, the mark in relation to the goods and services in your application, or have authorised someone else to.
- Fees for each class: at least $250 per class if you use the picklist, and more for every class you add.
Two of these trip people up more than the rest. The first is the owner: founders often file in their own name and later discover the mark should sit with the company, which means a recorded assignment and a change of ownership on the register. The second is the intention to use requirement, which sounds like a formality but is one of the grounds on which a registration can later be attacked. We'll come back to that.
The application process, step by step
Search existing trade marks first
The first step isn't the picklist at all. Before you settle on a mark and a set of classes, run your proposed name or logo through IP Australia's Australian Trade Mark Search, the free public register of pending and registered marks. If you're early in the process, IP Australia's TM Checker tool gives an early indication of whether your proposed mark can be used in the classes you're considering, along with estimates of cost and time, and links straight into the application process.
What you're looking for is an existing mark that is identical or similar to yours, for goods or services that overlap with your intended list. A hit doesn't necessarily mean you can't proceed, because similar marks can coexist in different classes, but finding out early is the cheapest moment in the whole process to do so.
Map your business to classes, not to industry labels
The picklist is organised around the international classification system used for trade marks: 45 classes in total, with classes 1 to 34 covering goods and classes 35 to 45 covering services. IP Australia's guidance is blunt about the first question to answer: do you sell goods, provide services, or both? A registration only protects the goods and services you claim, so the answer drives everything downstream.
Work from what you actually do, not from how you describe yourself. "Fintech" or "e-commerce brand" won't help you here; "mobile app for budgeting", "business consulting" and "online retail services" will. Useful questions to run through:
- Which products do you make or sell?
- Which services do you charge for?
- Do you deliver something digital, physical, or both?
- Are you the seller, or are you running a platform that connects other sellers with buyers?
Two guidance points are easy to miss. First, you don't need classes for the internal functions that every business runs, such as advertising, maintaining a website or recruiting staff. Second, you don't need classes for promotional giveaways with your logo, like pens or coffee cups. Cover your core goods and services only.
There's also a distinction between selling your own products and selling someone else's. If you make your own range, you need the class for those goods. If you only resell products made by others, the maker's trade mark covers the goods themselves, though IP Australia notes you may still want retail services in Class 35 if selling those products is an important part of your business. And if software is your product, a downloadable app is a good in Class 9, while providing software as a hosted subscription is a service that sits in the services classes, typically Class 42. The same offering can land in two different classes depending on how you deliver it.
Build your specification from the picklist
Once you know your classes, you select the specific items. This is the picklist proper. IP Australia describes it as a classification search where you enter keywords and the tool matches them against pre-approved descriptions listed in the correct classes. The list contains 60,000-plus items, and the fee calculator runs as you go, so you can see what your selection will cost before you commit.
Search with plain keywords and then with variants. IP Australia's own example is a builder trying "builder", "building" and "build", each of which surfaces different options. The official wording won't always match your marketing language, so try close alternatives for anything important.
When you find an item, check which class it sits in, because similar-sounding descriptions can sit in different classes depending on whether they're a product or a service. And remember the scope rule: your registration covers only the items you tick, not the whole class. Class 3, for example, contains cosmetics, cleaning preparations and dozens of other products; ticking "cosmetics" doesn't give you "carpet shampoo".
A recurring mistake at this stage is being too specific. IP Australia's example is a maker of memory foam mattress toppers: there's no picklist item that specific, and a registration for that one product wouldn't protect other bedding the business might make. The guidance is to choose a broader item such as "bedding" in Class 24 and add related items where relevant, so the protection has room to grow with the business.
File the application online
You file through IP Australia's Online Services. Under s 27 of the Trade Marks Act 1995 (Cth), the application must include a representation of the trade mark and specify the goods and services in accordance with the regulations. There are two main filing paths, with different fees per class:
- Standard application using the picklist: $250 per class. The cheapest route, and the right default for most applicants.
- Standard application without the picklist: $400 per class. You can write your own descriptions, but it costs more and carries a higher risk of examination objections.
- Additional classes: $450 per class if you need to add classes to an application after it's filed.
- TM Headstart: $330 minimum. IP Australia's pre-application service for first-time applicants: an examiner gives feedback before you formally file, you have five days to make changes and then five days to finalise, and the application lapses if you miss those deadlines.
- Postal application: $450 per class if you can't file online.
Whichever path you take, the specification you file is final. IP Australia is explicit that once you submit, you can't add new goods and services, and adding them means a new application. IP Australia also warns that you won't be refunded if you make a mistake and have to re-submit, which is another reason to test your selection against your real business before filing.
Respond to examination
Once filed, the application is examined under the Trade Marks Act. Examination usually takes three to four months from the filing date, depending on demand. If the examiner finds grounds for objection, such as a conflict with an existing mark or a description that's unclear, you receive an adverse report setting out the issues and a period to respond. Fixing the issues usually means filing submissions or amending the application. You can request expedited examination if timing matters, though the minimum time between filing and registration is still seven months.
Clear the opposition window and register
If the application passes examination, IP Australia advertises it in the Australian Official Journal of Trade Marks and on Australian Trade Mark Search for two months. During that window anyone can oppose the registration. If no opposition succeeds, the mark is registered, and under s 72 of the Act the registration runs for 10 years from the filing date and can be renewed in further 10-year terms.
One longer-term point belongs here. A registration can be attacked for non-use. Under s 92 of the Act, a person can apply to have a mark removed from the register, either in whole or for particular goods and services, if the mark hasn't been used in good faith for a continuous period of three years ending one month before the removal application, or if there was no genuine intention to use it when the application was filed. That's the legal teeth behind the advice to claim only what you actually use or genuinely plan to use.
Where people get held up
Applications most often stall at these four points:
- Wrong owner on the application: Filing in a personal name when the business is a company creates a transfer problem later and can complicate who can enforce the mark.
- Claiming too much or too little: Too narrow and your new revenue lines fall outside the registration. Too broad and you're paying for classes you may struggle to defend in a non-use action.
- Missing TM Headstart deadlines: The five-day windows are short, and the application lapses without them.
- Assuming the class covers the items: Your registration covers the specific items you selected, not the whole class heading.
When a trade mark lawyer is worth the fee
For a straightforward single-class application, the picklist route is something a business can genuinely handle itself. The cases where a lawyer earns their fee are:
- clearance searching and conflict assessment beyond what the free register shows;
- class and specification strategy, particularly where the business spans both goods and services, or where the picklist has no term for what you do;
- drafting custom descriptions where you're paying the higher non-picklist fee and need them to survive examination;
- responding to adverse examination reports and handling oppositions, whether opposing someone else's mark or defending yours;
- managing a portfolio across classes, jurisdictions and renewal dates, and assessing non-use risk under s 92.
A practitioner will typically review your business model, run a clearance search, prepare the specification, file on your behalf and manage the correspondence through examination to registration. That's the difference between following the checklist above and ending up with a registration that matches the business you actually run.
The specification is locked at filing
What decides whether this process succeeds is the goods and services specification, because it fixes the scope of your exclusive rights, drives the fees you pay and can't be amended after filing. Every other step, from the clearance search through examination and the opposition window, flows from that list, and the picklist is the cheapest, lowest-risk way to build it.
The path in summary: search the register first, map your real business to classes (1 to 34 for goods, 35 to 45 for services), build the specification from the picklist at $250 per class, file online or through TM Headstart, respond to examination, clear the two-month opposition window, and you hold 10 years of protection from the filing date. Take the time on the specification, and the rest of the process is largely administrative. Get it wrong, and everything downstream is wrong with it.