At some point your brand name stops being a detail and starts being an asset. That moment usually arrives with a growth milestone: a new product line you want to launch under your own name, plans to franchise, a pitch to investors who will ask what you actually own, or a competitor trading under a name that looks uncomfortably like yours. If you have been relying on your business name registration and your domain name, this is the point where the limits of that protection become obvious.
Registering a trade mark with IP Australia changes the position. It gives you the exclusive right to use your mark for the goods and services covered by the registration, and the right to stop others from using the same or a deceptively similar mark. Registration runs for 10 years from the filing date and can be renewed in further 10-year periods. The process has six stages, and this article sets out each one so you know what is coming before you start.
Before you apply: what you need in place
Trade marks are registered under the Trade Marks Act 1995 (Cth) (the Act), which IP Australia administers. Before you open the application form, work through this checklist:
- A mark that can be registered: a trade mark is a sign used, or intended to be used, to distinguish your goods or services from those of other people (s 17 of the Act). It must be capable of distinguishing what you sell (s 41). Plain descriptive words, like "soap" for a soap brand, usually fail this test. More on this below.
- A decision on the goods and services you will protect: every application must specify the goods and services the mark will cover (s 27). That specification drives the classes you apply in and the cost of the application, and it is hard to widen later. This is the decision most applicants underweight.
- A clearance search: before paying any fees, check that your mark is not the same as, or confusingly similar to, a mark someone else already owns or has applied for. The search step below explains what to look for.
- A fee budget: an online standard application costs from $250 per class of goods or services using IP Australia's picklist ($400 per class if you draft your own specification), and most businesses need more than one class. TM Headstart, the pre-application service, costs a minimum of $330. Fees are not refunded if you get it wrong and have to re-file.
- The right applicant: the applicant must claim to be the owner of the mark and be using it, or intend to use it, for the goods and services in the application (s 27). For a business this is usually the company or the individual owner, so decide whose name the registration should sit in before you file.
The registration process, step by step
Choose a mark that can actually be registered
The Act defines a trade mark as a sign used, or intended to be used, to distinguish your goods or services from anyone else's (s 17). A brand name, a logo, a slogan, or a combination of these can all be trade marks, and so can less conventional signs such as sounds, colours and shapes, although those are harder to register.
The central test is in s 41: your application must be rejected if the mark is not capable of distinguishing your goods or services. Words and images that simply describe the product, or that other traders legitimately need to use, generally fail. The word "soap" for a soap brand is the textbook example. A mark can overcome this hurdle through use: if you have traded under the mark for long enough that customers associate it with your business, evidence of that use can show the mark now distinguishes your goods in fact (s 41(3)). But that is a harder road than starting with a mark that is inherently distinctive.
A brand name made of invented or arbitrary words is the safest starting point. You should also satisfy yourself that the mark does not fall foul of the other rejection grounds in the Act, because the examiner will check the application against all of them.
Pin down your goods and services classes
IP Australia classifies all goods and services into 45 classes: 34 for goods and 11 for services, following the international Nice Classification. Class 1 covers chemicals used in industry and science, Class 3 covers cosmetics and hair lotions, Class 35 covers advertising and business services, and Class 44 covers beauty and healthcare services, to give a few examples.
Your application must specify the goods and services your mark will cover (s 27). IP Australia's picklist contains more than 60,000 standardised terms organised by class, and using it keeps fees down. Most businesses need more than one class: a hair salon, for instance, will typically want Class 44 for its salon services and Class 3 if it sells its own haircare products. The number of classes you apply in drives the filing fee, which is charged per class.
Get the specification right the first time. Once your application is on foot you cannot simply add goods or services; IP Australia only permits new classes to be added in rare circumstances, and charges extra for it. If your specification is too narrow, competitors can trade under your mark in the classes you left out.
Search the register for conflicts
Before you file, check that your mark does not collide with an existing one. Under s 44, an application must be rejected if the mark is substantially identical with, or deceptively similar to, a mark already registered or applied for by someone else in respect of similar goods or services. A mark is deceptively similar if it so nearly resembles the other mark that it is likely to deceive or cause confusion (s 10).
IP Australia's Australian Trade Mark Search is free to use and searches the register and pending applications. A thorough search is harder than it looks. You need to account for marks that look or sound like yours even when they are spelled differently, and for marks registered in classes that overlap with yours. Search results are only as good as the strategy behind them, which is why clearance searching is one of the main jobs IP professionals are paid to do. If a conflicting mark exists, your application may still be saved in limited circumstances, such as showing you have continuously used your mark since before the other mark's priority date (s 44(4)), but you need to know about the conflict before you commit to filing.
File your application with IP Australia
Applications are filed online through IP Australia's Online Services portal. There are two routes:
- TM Headstart: a pre-application service. You submit your proposed application and an examiner gives you an indicative assessment of whether it is likely to be accepted before you formally commit. It costs a minimum of $330. The trade-off is timing: you get a short window, measured in days, to make changes in response to the examiner's feedback and to formalise your application, and the pre-application lapses if you miss those deadlines.
- A standard application: the direct route. It costs $250 per class if you use the picklist, or $400 per class if you do not, and IP Australia's current wait time for examination is usually three to four months from filing.
Either way, the application must include a representation of the mark and the specification of goods and services (s 27). Have your applicant details, mark representation and specification ready before you start; the form itself is quick once you do. Fees are not refunded if you make a mistake, and a defective application cannot simply be corrected by starting again with the same filing date, so the preparation steps above are where the real work happens.
Navigate examination and answer any objections
IP Australia examines every application against the Act. If the mark passes, the application is accepted. If the examiner identifies problems, you receive an examination report setting out the issues, and you have 15 months from the report to respond, as IP Australia's guidance on examination reports explains. Miss the deadline and the application lapses.
The response options depend on the objection. If the examiner says the mark is not distinctive, you can argue the point or file evidence showing the mark has acquired distinctiveness through your use. If a conflicting mark has been raised, you can amend your specification, argue that the marks are not deceptively similar, or in some cases request a deferment while you resolve the conflict with the other owner. Extensions of time are available for a fee of $100 per month. If you cannot resolve the issues, you can request a hearing before a delegate of the Registrar, and a decision adverse to you can be appealed.
If your application is time sensitive, IP Australia offers expedited examination, but even then the minimum time between filing and registration is seven months, so factor that into your launch planning.
Clear the opposition window and get registered
Once your application is accepted, IP Australia advertises the mark in the Australian Official Journal of Trade Marks and in Australian Trade Mark Search, and opens a two-month window during which anyone can oppose the registration (s 52). This is a genuine risk for brands in crowded markets, and it happens after examination, so a clean examination result does not mean the process is over.
Opposition can be lodged on the grounds set out in the Act. The main ones are:
- the grounds on which an application could have been rejected, such as lack of distinctiveness or conflict with an earlier mark (s 57);
- the applicant is not the true owner of the mark;
- the opponent used the mark or a similar mark before the applicant did (s 58A);
- the applicant has no intention to use the mark;
- the mark is similar to one that has acquired a reputation in Australia, so that its use would be likely to deceive or cause confusion (s 60); or
- the application was made in bad faith (s 62A).
If someone opposes, you must file a notice of intention to defend within one month of receiving the notice of opposition, or the application lapses, as IP Australia's opposition guidance makes clear. From there the parties exchange evidence and the matter may proceed to a written or oral hearing before a delegate of the Registrar, who decides whether the opposition succeeds. An unsuccessful opposition clears the way for registration; a successful one rejects the application.
If no opposition is filed, or you overcome it, the mark is registered. Registration takes effect from the filing date and lasts 10 years (s 72), and can be renewed for further 10-year periods (s 77). Once registered, the mark gives you the exclusive right to use it and to authorise others to use it for the registered goods and services, and the right to sue for infringement (s 20).
Where applications get held up
Most applications that stall do so for one of these reasons:
- Specifications that are too narrow or too broad: too narrow and competitors trade around you; too broad and the examiner cites marks you never expected. The specification is difficult to change after filing, so pressure-test it before you pay.
- Skipping the clearance search: the first you hear of a conflicting mark should not be the examination report. A conflict raised after you have launched a product is far more expensive than one found before you filed.
- Missing deadlines: the TM Headstart windows, the 15-month response period and the one-month notice of intention to defend all end without reminders, and each can sink the application.
- A mark that is too descriptive: the strongest brands are built on arbitrary or invented words, and the weakest applications are built on words that describe the product. If your brand name is descriptive, weigh up whether evidence of use can save it before you spend on fees.
When to bring in a trade mark lawyer
Nothing in this process strictly requires a lawyer. IP Australia's forms are designed for self-filing, and many small businesses register marks without professional help. But the stages where applications fail are the stages where professional input pays for itself.
A trade mark lawyer or registered trade mark attorney can run a clearance search and give you a written opinion on whether your mark is distinctive and available, before you commit any fees. They can advise on class selection and draft a specification that covers your actual business without overreaching. If the examiner issues an adverse report, they can prepare the legal arguments and the evidence of use needed to overcome it. If someone opposes your application, they can manage the notice of intention to defend, the evidence and the hearing. And once your mark is registered, they can watch the register for conflicting applications, advise on enforcement against copycats, and handle the licensing and franchise arrangements that build value on top of the mark.
Measured against the cost of a rejected application, a rebrand, or a dispute with a competitor who filed first, the cost of professional advice at the front end is usually modest. Most firms will quote a fixed fee for a clearance search and opinion, and a fixed fee for preparing and filing an application.
What determines whether your application succeeds
What decides whether your application succeeds is the quality of the work done before anything is filed. The mark itself, the classes chosen and the conflicts found in the search are all locked in on day one. IP Australia's examination, the 15-month response period and the opposition window are all downstream of that first set of decisions. An application built on a distinctive mark, a carefully chosen specification and a clean search will usually progress to registration with nothing more than patience; an application built on a descriptive mark, guessed-at classes and a skipped search will generate reports, extensions and oppositions no matter how carefully you respond to them.
In short, trade mark registration is a structured, deadline-driven process with six stages: choosing a registrable mark, classifying your goods and services, searching for conflicts, filing with IP Australia, answering any examination objections, and clearing the two-month opposition window. Fees run from $250 per class for a standard application and $330 minimum for TM Headstart, examination usually takes three to four months, and a successful registration lasts 10 years and is renewable. The steps are manageable on your own, and the places where they go wrong are the places a trade mark lawyer can help most.