Making a Trade Mark Application in Australia

Making a TM application in Australia

It is important protect your brand as it’s more than just a logo or a name, it’s the identity that customers associate with your goods or services. Applying for a trade mark in Australia is one of the most effective ways to secure that identity. But the process, while straightforward on the surface, can be complex if not navigated properly.

Step 1: Determine the Right Owner

Getting the ownership right is crucial. The entity listed on the application must have a legal personality. That means the ability to own property, enter contracts, and sue or be sued.

You can apply as:

• An individual (such as a sole trader)
• A company (e.g., XYZ Pty Ltd)
• A trustee (e.g., John Smith as trustee for Smith Family Trust)

You can’t apply under a business name, a partnership (as an entity), or a trust without naming the correct underlying legal owner. This is a surprisingly common error and one that can cost businesses dearly down the road if not caught early.

Step 2: Make Sure You’re Eligible

To apply for a trade mark in Australia, you need to meet two basic requirements:

• You must either reside in Australia or New Zealand, or have an authorized representative here.
• You must have an intention to use the trade mark in relation to the goods/services you’re applying for.

Step 3: Know What You’re Protecting

Trade marks aren’t limited to business names or logos, you can register:

• Words
• Phrases
• Logos
• Sounds
• Shapes
• Scents (in rare cases)

It’s also essential to identify which classes of goods or services your trade mark will apply to. Australia follows the Nice Classification system, which categorizes products and services into 45 classes.

Example: If you sell clothing, you’ll likely apply under Class 25. If you’re offering software services, Class 42 may apply.

Step 4: Search Before You File

Before applying, it’s essential to search existing registered and pending trade marks on IP Australia’s database. This helps avoid filing a mark that’s identical or confusingly similar to someone else’s.

While the search tool is publicly available, interpreting the results correctly is tricky. Two marks don’t have to be identical to create a conflict , even phonetically similar words or stylized variations could pose problems.

For search domestic existing trade marks, i.e. in Australia, The TM checker and Australian Trade Mark Search (ATMS) can be used.

Among the two options, one can use TM Checker to get feedback on how likely your trade mark application is to succeed with AI assisted checks, or use the Australian Trade Mark Search to just look up existing and pending trade marks.

 

In the case of International Trade Mark search, the WIPO global database is the way to go about it. Available here- International search

Either way, a licensed IP attorney can perform better searches making sure that you don’t miss out on any potential hindrance that might be in case of going forward with your application.

Step 5: Choose Your Application Path

There are two main routes you can take when lodging your trade mark:

• TM HeadStart

This is a two-part process where an IP Australia examiner gives you initial feedback before your application is formally submitted. It costs slightly more, but helps identify any major issues early on.

Good for: First-time applicants, brand-new businesses, or those filing complex marks.

• Standard Application

This is the formal filing route. It’s less expensive and faster upfront but doesn’t provide early feedback before the official examination.

Good for: Experienced applicants or those who have already done professional due diligence.

Step 6: Submit the Application

You’ll need to provide the following details to the IP attorney (recommended) who’s helping you to navigate through the process:

• Correct ownership details
• A clear representation of your mark (image, text, sound file, etc.)
• List of goods/services with corresponding class numbers
• Payment details

Filing is done through IP Australia’s online portal, and the process typically takes about 15-30 minutes, if you know exactly what you’re doing. But even small errors in spelling, class selection, or ownership can lead to refusals or costly amendments. Thus, consulting an IP attorney to navigate through the process becomes crucial.

Step 7: Examination and Outcome

After submission, here’s what to expect-

• Examination (3-4 months)– An IP Australia examiner will review your application for legal and technical compliance.
• Acceptance– If your application passes, it will be advertised for 2 months for opposition.
• Opposition Period– Anyone who believes your mark conflicts with theirs can file an objection.
• Registration– If no opposition is filed (or you successfully defend against it), your trade mark is registered.

Once registered, your trade mark lasts for 10 years, and it can be renewed indefinitely every decade.

While it’s possible to apply on your own, trade mark law has many nuances. From ensuring your mark is legally strong to navigating oppositions or rejection notices, expert guidance can save you time, stress, and money.

So, if you’re looking to protect your brand, our team at LexGeneris is here to help. We handle everything from start to finish, so you can focus on what you do best, i.e. growing your business.

Contact us today to book a free initial consultation or to start your trade mark application with confidence.