Registering a trade mark is often a first priority when starting a business or releasing a new product. The process can be difficult to navigate, especially if you have never done it before. Intellectual Property (IP) Australia are the governing body which examines all trade mark applications in Australia and registers all marks. Generally, the entire trade mark process will take seven and a half months from application through to registration. This article will outline the process of trade mark registration in Australia.
An important first step is to do an online search of the IP Australia Trade Marks Register to see if there are any marks which may conflict with yours. It’s a good idea to also search the proposed mark with different spellings, for example, BARBIE, BARBY and BAR-B.
To ensure that another business is not already trading under your name (even if they don’t have a trade mark), you should also search the Australian Business Number (ABN) Register and the Australian Security and Investments Commission (ASIC) company name register. Even a simple Google or Bing search is helpful to see if there are any competitors using your proposed name.
Determine the Classes in Which You Want to Register
Once you’ve confirmed the word or logo you would like to register as a trade mark, you will need to determine which of the 44 classes of goods and services is appropriate for your business.
You need to think about exactly what your business sells or provides and where you derive your income. It’s important to get this right as it will determine how your mark is protected, especially in relation to other marks in similar or the same classes. For example, if you provide an app that allows people to connect and buy and sell their wares, you would not need to apply in relation to retail goods or applications, but online marketplaces.
Confirm Application Details
It’s important to confirm the details of the application prior to commencing the trade mark process. You should clarify who will be the trade mark owner: an individual or sole trader, partnership or company?
The register is public and both the trade mark owner and their address are available for public viewing. Therefore, keep this in mind when deciding on the owner and address you will submit in your application.
In addition, remember that, if you are a company, you should ensure that entity is listed as the trade mark owner to ensure it is protected. If you personally register it, the asset is at risk if you are sued.
File a Headstart Application
A Headstart application is the best method to get a quick result in your trade mark application. An IP Australia examiner will examine your application and provide a headstart results report with feedback within five business days of receiving the application. If you do not submit a Headstart application, but a full application instead, you will not receive a speedy response, nor will you be able to amend the application easily.
The Headstart results report is extremely helpful to identify any initial issues with the mark. It also gives you the ability to amend the trade mark application before proceeding to a full application.
If objections have been raised, you can amend the application for a fee. If no issues have been raised, or if issues have been raised and you would still like to proceed, you can convert your application to a full application.
An examiner may raise a number of objections in relation to your mark. The two most common are a:
- distinctiveness objection: IP Australia raise this objection when your mark is not distinctive or does not adequately distinguish the goods and services you provide. For example, BRISBANE TILERS R US simply describes the location and services; and
- similarity objection: When the mark is the same as or deceptively similar to an existing or pending mark which operates in the same or similar classes of goods and services e.g MCDONALDZ for a catering business.
Formal Reports (No Objections Raised)
Once you have either converted your Headstart application to a full application or responded to the objections raised by the examiner, you will receive a formal report. This usually takes about two to four weeks.
The report will outline if the examiner has raised any objections or if the application has not raised any objections. If no objections have been raised, the mark will continue through to the advertisement period on the trade marks register.
Examination Report (Objections Raised)
Once you have converted your application to a full application, and perhaps responded to the initial objections, IP Australia will issue you with a first examination report. This report is usually received in 13 weeks and will outline the objections raised.
If IP Australia have objections, your mark will ‘sit’ on the register in a pending status for a period of 15 months. You will be able to respond to the objections in this period.
Once your mark has passed its examination period and advertisement period, it will enter a two and a half month opposition period. This is a time in which others may oppose your mark.
If someone wants to oppose your mark, IP Australia will notify you with a notice of intention to oppose. If someone raises an opposition to your mark, the onus is upon them to file a statement of grounds and particulars, which will set out their grounds for opposing your mark.
If your trade mark passes the examination period, without objections or after overcoming objections, and proceeds without opposition, IP Australia will register your mark.
It will appear as registered on the IP Australia register, which is publically available. The mark will have protection for 10 years before it is due for renewal.
Managing the trade mark process can be difficult. There are many considerations before even filing your first application. Getting your trade mark right from the start ensures you protect your branding effectively. Additionally, it allows you to focus on other important aspects of your business. Get on the front foot early by seeking legal guidance from a team who can guide you through the process and handle any objections seamlessly if and when they arise.