Choosing a business name, product name or logo can be one of the most exciting parts of building your brand. But many businesses only think about the legal side after they have already spent money on a website, packaging, signage and marketing.
That can become an expensive problem! Registering a company name, business name or domain name does not necessarily mean you can register (or safely use) that name as a trade mark. Before you commit to a brand, you need to consider whether it is distinctive, whether it conflicts with earlier rights, who should own it and which goods and services you want to protect.
The Australian trade mark process is not simply a form-filling exercise. The decisions you make before filing can determine whether your eventual registration is commercially useful, unnecessarily narrow or vulnerable to challenge.
This guide explains what you can expect before, during and after filing an Australian trade mark application, and the mistakes that can make the process more costly.
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What does an Australian trade mark protect?
A trade mark helps customers identify the commercial source of particular goods or services. It can be a word, logo, phrase, letter, image, shape, colour, sound, movement, aspect of packaging or a combination of these elements.
Registration can give you exclusive rights to use, license and commercially deal with your trade mark in connection with the goods and services covered by the registration. A registered trade mark will also generally give you clearer and stronger protection than relying only on an unregistered brand.
However, registration does not give you ownership of a word or logo for every possible purpose. The scope of your protection will depend on:
- the mark you filed;
- the goods and services listed in your application;
- the identity of the registered owner; and
- the way the mark is used.
Understanding those limits before you file can help you avoid costly mistakes later.
Before you file
Step 1: Identify what you need to protect and who should own it
Start by identifying which parts of your brand have real commercial value. Depending on your business, that might include your company or business name, your logo or another sign that customers associate with your business.
In some cases, registering your business or product name as a plain word mark can give you more flexible protection than registering only a stylised logo. A word mark is not generally limited to one particular font, colour or design, which can make it useful if your branding changes over time.
For other businesses, the logo or visual presentation may be the most distinctive part of the brand. You may even decide to file separate applications for both the name and the logo.
You also need to decide who should own the trade mark. The applicant might be you personally, your operating company, a trustee or another legal entity. This is not just an administrative detail. Filing in the wrong name can create serious complications later.
Example: How the Wrong Owner Can Cost You Your Brand
For example, imagine one of your business partners applies to register your company’s logo in her own name rather than in the company’s name. If she later leaves the business, your company may discover that it does not control the registration. The trade mark will not necessarily transfer to your company simply because your business paid for the logo or used it publicly. Resolving the issue may require an assignment, negotiation or legal proceedings, depending on your agreements and the surrounding circumstances. In the meantime, your former partner may be able to restrict your company’s ability to use, license, sell or enforce rights in one of its most valuable brand assets.
Step 2: Conduct a meaningful clearance search
You should search your proposed trade mark before your business becomes heavily committed to the brand. IP Australia provides tools including TM Checker and the Australian Trade Mark Search. You can use these to search registered and pending trade marks by words, phrases, images, owners and goods or services.
The Australian Trade Mark Search tool generally provides more advanced search options and can help you investigate potentially relevant earlier marks.
However, you should not limit your search to exact matches. Another trade mark does not need to be identical to create a problem. Similarities in spelling, pronunciation, appearance or meaning can all matter, particularly where the marks relate to the same or closely connected goods and services. Changing one letter, adding a space or inserting a descriptive word may not solve the problem if customers are still likely to think the brands are connected.
You should also look beyond the trade mark database. Another business may have relevant unregistered rights or an established reputation even if it does not own an identical registered trade mark.
Want to avoid costly errors when protecting your brand? Read our guide to the 10 common mistakes in trade mark registration and learn how to steer clear of them before you file.
Step 3: Consider whether your mark is distinctive
Your trade mark needs to do more than simply describe what your business sells.
For example, a name such as “Melbourne Accounting Services” tells customers what the business does and where it operates. That may be useful from a marketing perspective, but those descriptive qualities can make it difficult for you to obtain exclusive rights. Other accounting firms may have a legitimate need to use the same or similar words.
By contrast, an invented word, unusual expression or name that does not directly describe your goods or services may be easier to distinguish from competitors.
Whether your mark is registrable may depend on the mark as a whole, the goods and services you claim, the ordinary meaning of the words, whether other traders may need to use the same language, and in some cases, evidence that your mark has become distinctive through use.
Step 4: Select the correct goods and services
Your Australian trade mark application must identify the goods or services you want to protect.
The classification system used in Australia contains 45 classes. Classes 1 to 34 generally relate to goods, while Classes 35 to 45 generally relate to services. However, choosing the right class number is only part of the process. The wording of the individual goods and services in your application is just as important.
If you select too few classes or use descriptions that are too narrow, important parts of your business may fall outside your registration. On the other hand, if you select excessively broad goods and services, you may increase your costs and create future vulnerability if you do not genuinely use the mark for everything claimed.
Once you file a standard application, only limited amendments are generally available. You cannot ordinarily expand the application by adding entirely new goods or services and you may need to file another application instead.
Step 5: Choose between TM Headstart and a standard application
You will be able to choose between TM Headstart and a standard trade mark application:
TM Headstart
TM Headstart is a pre-application service. It allows an IP Australia examiner to give you an indicative assessment before you convert the request into a formal application.
It may be helpful if this is your first application, you are unsure about classification or you want early feedback before formally filing. After you receive the examiner’s report, strict deadlines apply for making permitted changes or converting the request into a formal application.
TM Headstart also has limits. The examiner cannot give you legal advice or determine whether your use would infringe someone else’s rights. You also do not receive an effective filing date until you formally convert the TM Headstart request into an application.
This option comes at a slightly higher fee.
Standard application
A standard application is filed immediately and receives a filing date at that point.
This pathway may suit you if you have already completed appropriate searches and are confident with the marks you wish to file.
There is no pre-application assessment, and only limited changes are generally available after filing. This option is cheaper than the TM Headstart option.
After you file
Step 6: Examination by IP Australia
After you file, IP Australia examines your application to determine whether it meets the legal requirements for registration.
The examiner may consider a number of factors, including whether your goods and services have been classified appropriately, your mark is capable of distinguishing your goods or services, your application conflicts with earlier trade marks, the applicant details are correct, and the other statutory requirements have been met.
If the examiner identifies an issue, IP Australia will issue an examination report. Receiving an examination report does not necessarily mean your application has failed. Depending on the objection, you may be able to respond with legal submissions, amendments, evidence of use, a letter of consent, or other relevant material.
You should not treat an examination report as a simple administrative request. An unnecessary amendment could narrow your protection, while a response that does not address the legal issue may prevent your application from progressing.
Step 7: Acceptance and the opposition period
If the examiner is satisfied, your application will be accepted and advertised. It’s important to note that acceptance at this stage is not the same as registration.
Once the application is advertised, other parties have an opportunity to oppose it within the relevant opposition period. An opposition might allege that your mark is too similar to an earlier mark, your use is likely to deceive or confuse customers, or another legal ground prevents registration.
If someone opposes your application, you will need to decide whether to defend it. Opposition proceedings are different from ordinary examination. They may involve pleadings, evidence, written submissions, settlement negotiations, and a hearing.
They can also expose both sides to significant legal costs. A thorough search before filing cannot eliminate every risk of opposition, but it can help you identify potential conflicts before you invest further in the brand.
After registration
Step 8: Registration, renewal and ongoing use
If your application is accepted, no successful opposition is made and the remaining requirements are met, your trade mark then proceeds to formal registration.
An Australian trade mark registration generally lasts for ten years from its filing date and can be renewed for further ten-year periods. You should record the renewal date well in advance and make sure responsibility for the trade mark is clear if your business structure changes.
Remember – registration is not the end of the process! You should also:
- use the mark consistently;
- keep evidence of use;
- monitor the market for conflicting brands;
- record assignments or ownership changes;
- control use by related companies and licensees; and
- review whether you need additional applications as your business expands.
Your registration may become vulnerable to removal if you do not use the mark for the registered goods or services during the relevant statutory period.
Key Questions to Ask Yourself Before Filing
Before you file, you should be able to answer five questions:
- What exact word, logo or other sign are you protecting?
- Who is the correct legal owner?
- Has the proposed mark been searched properly?
- Which goods and services need to be covered?
- Is TM Headstart or a standard application the better pathway?
If your brand is commercially important, likely to expand or already attracting investment, getting advice at the search and drafting stage can help you avoid problems that may be difficult (or impossible) to fix later.
Frequently Asked Questions
Does registering a business name give you trade mark rights?
Not by itself. Registering a business name allows you to trade under that name. It does not give you the same exclusive rights as a registered trade mark and does not necessarily mean the name is available for use without legal risk.
How much does an Australian trade mark application cost?
The cost depends on the filing method, the number of classes and whether you use TM Headstart or a standard application. Your costs may also increase if you need amendments, professional advice, responses to examination reports or assistance with an opposition.
Because IP Australia’s fees can change, you should always check the current fee schedule before filing.
How long does trade mark registration take?
IP Australia advises that registration generally takes at least seven months. The process may take longer if an examination report is issued, evidence is required or another party opposes your application.
Before you invest further in a name, logo or product launch, it is worth getting advice about ownership, clearance searches and the scope of protection your business needs.
Prosper Law’s intellectual property lawyers can assist you with trade mark searches, applications, examination reports, ownership issues and opposition proceedings.
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