You have chosen the name for the new product line, the designer has delivered the logo, and the launch date is set. Or a competitor has quietly started trading under a name close to yours and you are wondering what your brand is actually worth. This is the point where registering a trade mark stops being a paperwork chore and becomes a decision about who owns your brand and what you can do with it.
A registered trade mark gives you enforceable rights across Australia. At the end of the process you hold an entry on the Australian Trade Marks Register, the exclusive right to use the mark for the goods and services you registered, and a right to sue for infringement. One thing people routinely assume is that registering a business name with ASIC protects the brand. It does not. A business name simply lets you trade under that name. It gives you no exclusive rights to it, and another trader can still use the same name as a trade mark.
Before you apply: the six things to have sorted
Work through these six items before you spend money on an application:
- The owner: A trade mark must be owned by a person or entity with legal personality. An individual, a company, or the trustee of a trust can apply. A business name, a trust, or a partnership cannot own a trade mark, so the application goes in the name of the underlying owner. Getting this wrong is one of the most common mistakes, and it is difficult to fix later.
- A mark that counts as a sign: Under s 6 of the Trade Marks Act 1995 (Cth), a sign includes any letter, word, name, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of them. A word, a logo, a slogan, a colour, a product shape, a sound or even a scent can all be registered if they meet the other requirements.
- A genuine intention to use it: You must intend to use the mark for the goods or services in the application, and you (or your agent) must reside in Australia or New Zealand. Marks filed with no real intention to use them are vulnerable.
- A clearance search: Before you spend money on the application, check whether the mark is available. IP Australia offers two free search tools: TM Checker, which gives an early indication of problems using artificial intelligence, and the Australian Trade Mark Search, which covers registered and pending marks.
- A decision on classes: Trade marks are filed against classes of goods and services. There are 45 classes under the international Nice classification, with classes 1 to 34 covering goods and classes 35 to 45 covering services. The classes you choose set the scope of your protection, and each class attracts a fee.
- The fees: A standard application costs a minimum of $250 per class. Fees are not refunded if you make a mistake and have to resubmit, which is why the first five items matter.
The registration process from application to renewal
IP Australia runs the process in four stages: application, examination, acceptance and registration. From filing to registration takes at least seven months, and usually longer. Here is what happens at each stage.
Search before you file
The search is the step that most determines whether the process ends in success or a refusal. TM Checker is free, needs no online services account, and returns feedback on whether your proposed mark is likely to hit problems, an estimate of the cost, and an estimate of how long the application might take. The Australian Trade Mark Search lets you look through registered and pending trade marks by word, phrase, image, owner, or goods and services, including an image comparison search.
What the free tools cannot tell you:
- whether an unregistered business has been trading under the same or a similar name long enough to have prior rights, or to sue you for passing off;
- whether your mark is distinctive enough to survive examination, which is a judgement call rather than a search result; and
- whether the mark is safe in every class you might want to use it.
A clean TM Checker result is an encouraging sign, not a guarantee. If the brand matters to your business, a professional clearance search by a trade mark lawyer or attorney is the difference between an informed filing and a hopeful one.
File the application
There are two ways to apply, both lodged through IP Australia's online services:
- Standard application: Costs a minimum of $250 per class if you use the picklist of standard goods and services descriptions, or $400 per class without it. You pay the full fee up front and get a priority filing date from the day you file. If the application succeeds, protection runs from that filing date.
- TM Headstart: Aimed at first-time filers. An examiner assesses the application before you formally file it. The minimum cost is $330 per class, made up of a $200 assessment fee and a $130 conversion fee, with amendment fees of $150 to $200 if changes are needed. The examiner sends a report within five business days, and you then have five business days to amend the application and five to formalise it. Miss a deadline and the application lapses. The examiner can flag problems but cannot give legal advice or guarantee success.
Whichever route you take, the application needs four things: the owner's details, a representation of the mark (an image of the logo or a recording of the sound), a list of the goods and services with their class numbers, and payment. Under s 17 of the Trade Marks Act 1995 (Cth), a trade mark is a sign used, or intended to be used, to distinguish your goods or services from those of other traders. The application must say exactly what the sign is and what it will be used on, because both limit the rights you get.
Get through examination
About three to four months after you file, an examiner checks whether the application meets the requirements of the Act. The main grounds of rejection are:
- Not capable of distinguishing: Under s 41, a mark that is not capable of distinguishing your goods or services from those of other traders cannot be registered. Words that other traders legitimately need to use, such as descriptive or generic terms, are hard to register. The more invented or arbitrary the mark, the easier the path.
- Conflicting with an earlier mark: Under s 44, the application must be rejected if your mark is substantially identical with, or deceptively similar to, a mark that is already registered or pending for similar goods or closely related services, unless an exception applies, such as honest concurrent use or continuous prior use.
- Containing prohibited signs: Under s 39, certain official emblems, such as national flags and the Red Cross emblem, cannot be used as trade marks. The Act also contains other rejection grounds, including marks that are scandalous or whose use would be contrary to law.
If the examiner finds a problem, you receive a report and a limited period to respond. You can argue the point, amend the application, or file evidence of use of the mark. Applications that are clearly descriptive or clearly in conflict rarely survive, which is why the search and the choice of classes before filing matter so much. If your filing is time sensitive, you can request expedited examination, but the minimum of seven months between filing and registration still applies.
Clear the opposition window
If the application passes examination, it is accepted and advertised 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 under s 52 of the Act, and opposition is only possible on grounds the Act specifies. Most applications are never opposed. But a business with an earlier reputation, even an unregistered one, can block your registration here, and opposing or defending an opposition involves its own process and costs.
Register, then keep the registration alive
If no one opposes, or you overcome the opposition, the mark is registered. Under s 72 of the Act, registration lasts 10 years from the filing date. The registered owner then has the exclusive rights under s 20 to use the mark and to authorise others to use it for the registered goods and services, plus the right to sue for infringement. That right to authorise others is what makes licensing and franchising the brand possible, which is where a trade mark stops being a defensive asset and starts generating income.
Registration is not the end of the story, because it is the owner's job to keep it alive:
- Renewal: You can renew the registration for further 10-year terms by paying the renewal fee before the current term ends. If it is not renewed, the registration ceases and the mark can be removed from the Register. Renewing late is possible for a limited period, but it costs extra and is not something to rely on.
- Use it or lose it: Under s 92 of the Act, a third party can apply to have a mark removed from the Register if it has not been used in Australia for a continuous period of three years. A registration that sits unused is a target.
- Country by country: A registration protects the mark in Australia only. If you trade or plan to trade overseas, separate protection is needed in each country, or through an international registration system.
Where applications stall
Most applications that stall fail for one of four avoidable reasons:
- The owner is listed incorrectly: Applications filed in a business name, a trust, or a partnership fail the legal personality requirement, and correcting the owner's name later is hard. List the individual, the company, or the trustee from day one.
- The specification does not match the business: Too narrow a list of goods and services leaves gaps that competitors can use. Too broad a list attracts objections, and unused classes are exposed to non-use removal. The goods and services description deserves real thought.
- Free search results are treated as clearance: TM Checker and the Australian Trade Mark Search do not detect unregistered prior use or assess distinctiveness. A brand that clears both can still be refused or opposed.
- TM Headstart deadlines are missed: The five-business-day windows are strict, and the application lapses if they pass. Check the online services inbox regularly.
Where a trade mark lawyer earns their fee
Most of the registration process is administrative, and a capable business can file a simple word mark itself. The value of a trade mark lawyer shows up at the judgement points. A lawyer can run a proper clearance search that covers unregistered prior use and passing off risk, advise on whether a mark is distinctive enough to survive examination, draft the goods and services specification so it covers the business without overreaching, respond to examination reports, and handle an opposition if a competitor objects. After registration, a lawyer can enforce the mark against infringers, put licensing and assignment agreements in place so the brand can be monetised, and manage renewals and non-use risk so the registration does not quietly lapse. If your brand is central to the business, that advice is usually cheaper than a refusal, an opposition, or a brand relaunch.
The clearance search before you file
If there is one step that determines whether your application succeeds, it is the clearance search done before you file. The Register is first-in-time, the filing date fixes your priority, and your fees are not refunded. A mark that clears a proper search and is filed in the right classes by the right owner usually flows through examination, acceptance and registration without drama. A mark that is not searched properly can be refused months later, opposed by an earlier user, or worse, register successfully and then be attacked for non-use or conflict when you try to enforce it. Do the homework before you spend the money, and the rest of the process becomes routine.
Trade mark registration is a defined path: search, file, respond to examination, survive the opposition window, and then maintain the registration for as long as the brand is worth protecting. The Trade Marks Act 1995 sets the tests at each step, IP Australia publishes the fees and timeframes, and the two free search tools give you a genuine starting point. What the free tools cannot give you is certainty, and that is what a trade mark lawyer adds when the brand is worth it.