Australian Trademarks

What is a Trademark and how do you Register a Trademark?

The trademark laws operating in Australia define a trademark as:

“A sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.”

A sign, for the purposes of trademark registration can be pretty much anything – a word or words, a logo (comprising words and imagery or style), an image on its own, a colour, a shape, an aspect of packaging and even smells and sounds can be registered as trademarks. The key is to ensure that your ‘sign’ is capable of distinguishing your goods/services.

This means it needs to act as a ‘badge of origin’ for those goods or services, something that lets consumers and others know that the product/service belongs to you. It is therefore more difficult to register a trademark if it is, or has as its main element/s, something that other traders would honestly need to use to describe their goods/services of the same or similar nature to yours.

Who can own a trademark?

The making of an application in itself is confirmation to the trademark office that you use, or intend to use the trademark for the goods/services that are relevant. The ‘rightful’ owner is usually the one that adopted the trademark, or has permission to file on behalf of another person. A trademark can be challenged by other parties if they believe that you are not the ‘rightful owner’ of the trademark, or that the application has been made in bad faith.

Step 1 – Trademark Search

We consider that a trademark search should head your ‘to do’ list when considering a new name for a business, company, product or service. If your preferred name is too similar to other Australian trademarks you could not only have difficulties in securing rights, but you may be infringing another person’s rights and face action because of it.

Ensuring your chosen trademark is available and is not infringing anyone else’s rights provides you with peace of mind to know that your ‘brand’ won’t be stepping on any toes, and that it can become your property and business asset.

Even if you have been using your ‘brand’ and promoting it for some time, difficulties can arise so a trademark search should always be considered.

The official examination with the government office once you file an application can take a long time (usually around 4 months) so you may wish to know where you stand sooner and our various searches can provide you with this information.

Our office offers a Free Trademark Search, which is often a good first step, as this will rule out any obvious issues. Click here to order your search now.

Step 2 – Filing the Application & Classes

As trademarks are ‘signs’ used to distinguish the goods/services of different traders, it follows that when you file an application you must advise what those goods/services are.

All goods and services fall into ‘classes‘ that have been listed and put in place under an international agreement. The list of classes and the goods/services that fall into them have been adopted by a majority of countries around the world. There are 45 of these ‘classes’ to select from. Numbers 1-34 cover goods and numbers 35-45 cover services. A part of our search process (regardless of the type of search you select) is to provide recommendation on which classes you require.

When we prepare and file applications for Australian trademarks in order to meet the basic filing requirements, we must advise the trademark office of the class number and provide a specification of the goods/services being claimed with the class/es. By employing our office to file the application on your behalf, we will attend to this for you.

Further, by employing our office to file the application we will be listed as your agent on the official record as the “address for service”. This means all government correspondence will come to our office for attention – it also means that in the event another party wishes to query, contact or challenge your trademark they should contact us rather than you directly. By receiving all communication for you we can review, report and advise accordingly.

Step 3 – Government Examination (Report or Approval)

After your application is filed the government office must examine all of the details to ensure that:

  1. The basic filing requirements are met; and
  2. To ensure that your trademark is registrable

This process currently takes around 4 months – a time frame that does fluctuate. Once examination is complete, we will receive an ‘adverse report’ if there are any problems found, or a ‘notice of acceptance’ if no problems are found.

Notice of Acceptance (approval)

If no issues are found during the government examination of your application – or if you successfully address any issues that are raised – a notice of acceptance will be issued. This will advise of the date on which the acceptance of your trademark will be advertised in the Official Journal of Trademarks. The advertisement of acceptance commences a period of time during which other people may lodge formal objections to your trademark becoming registered, if they believe they have grounds to do so. They will have 2 months from the date of advertisement to file a notice of intention to oppose. Once a notice of intention to oppose has been filed, the ‘opponent’ must then lodge their statement that sets out the grounds, and particulars upon which they oppse.

If nobody lodges a notice of their intention to oppose, or do not request an extension of time in which to lodge their objection, your trademark can then progress to full registration.

Step 4 – Registration & Rights

Once Australian trademarks are accepted for registration and, assuming not opposed by a third party
(or, if you are opposed but come out as the successful party) the trademark can then proceed to registration. This will not occur for around a minimum of 7.5 months.