Trade Mark Applications & Advice

After your trade mark search is complete and you have the ‘green light’ to proceed, or if you choose not to have a search conducted we will need to prepare and file your trade mark application with the Trade Marks Office in Australia. At this time, we must nominate the goods/services that your trade mark will be used to identify and the relevant classes for your application (our searches will have recommended these to you). Click here to access the trade mark application instruction form.

We can also assist in filing of international trade mark applications if you have interest in exporting a product, or providing your services outside of Australia.

We will receive all correspondence on your behalf and report it to you accordingly. In the event an adverse report is issued we will report this to you and provide recommendations in addressing any issues at no additional cost to you.

There are a few key reasons to use a trade mark attorney, rather than filing your own trade mark application, including:

• To ensure the application is filed correctly! Incorrect filing could result in further applications and costs in the future.
• To receive, review and advise on correspondence from the government office, which is often complicated.
• Monitoring and acting on deadlines to ensure they are never missed and your trade mark is never in jeopardy

Why Choose Us? Find out here just some of the reasons we are a good choice to attend to your trade mark application.

• First class on application: $895.00
• Each additional class on application: $610.00

In the event a report is issued we can attend to this on your behalf. Some matters will be quite simple to overcome. In other situations you will be asked to provide ‘evidence’ of your use of your trade mark to address the issues. We can prepare this for you, including declarations to ensure the best chance of success for your trade mark. Fees will apply in these situations, but will always be quoted to you and your instruction sought before they apply.

If you receive an adverse report after you’ve conducted a full search before filing your trademark application (or if you sought early assessment before filing), it probably comes as no surprise.  Your preliminary investigations are likely to have highlighted the issues raised in the adverse report.

There is a time limit for responding to an adverse report.

If you have filed a Headstart application so as to obtain an early assessment from the trade marks office, you will have only 7 days from the date of the report to decide how you wish to proceed.

Once an application is formally filed and a formal report is issued, ou have 15 months from the date of issue of the adverse report to respond and address the issues raised in a way that ensures your trade mark is in order for acceptance by the deadline.  We typically recommend that you respond as soon as possible, because if you delay your response and need to request an extension to that 15-month timeframe, you may incur an additional fee.

The most common reasons for the trade marks office to object to your trademark being approved are:

1. a) Your trade mark conflicts with a trade mark that has an earlier priority date than your own
2. b) Your trade mark is not automatically seen as capable of distinguishing your goods/services from those of other traders

These types of issues are generally addressed by:

• providing evidence of use of your trademark (or in some cases, intent to use your trade mark)
• refining your goods/services to remove the issue
• negotiating with owners of earlier trade marks

Our office will advise you of the best option which is most likely to succeed based on your particular circumstances.  There is no additional cost for this advice as it included in your application fee.  If further action is required, we will always seek your instruction first.  If (and only if) that is provided, will we take further billable action on your behalf.