In Australia’s competitive marketplace, registering a trade mark is a crucial step in safeguarding your brand’s identity as it provides legal protection against unauthorized use and offers exclusive rights to the owner for specific goods or services. However, understanding the registration process is vital to ensure your trade mark application is successful and enforceable.

What is Trade mark Registration?

A trade mark is a unique identifier for a business’s goods or services, such as a name, logo, slogan, or a combination of these elements. Under the Trademarks Act 1995 (Cth) (“the Act”), a trade mark distinguishes the goods or services of one trader from those of another (Section 17). Registering a trade mark with IP Australia provides legal recognition and grants exclusive rights to use, license, or sell the mark within Australia.

Step 1: Determine What Can Be Registered as a Trade mark

The first step in the registration process is determining if your mark qualifies for registration. The Act allows for the registration of various signs, including words, logos, sounds, colors, shapes, and even scents, as long as they are capable of distinguishing your goods or services from those of others (Section 17). However, some marks are not eligible for registration, such as those that are:

1. Descriptive or Generic: Marks that describe the goods or services, like “Best Cleaning Service,” are generally not registrable unless they have acquired distinctiveness through use (Section 41).

2. Deceptively Similar: Marks that are too similar to existing registered trade marks or pending applications can be rejected (Section 44).

3. Offensive or Contrary to Law: Marks that contain offensive content or violate other laws, such as copyright, cannot be registered (Section 42).

Step 2: Conduct a Comprehensive Trademark Search

Before filing an application, conduct a thorough search using IP Australia’s Australian Trade Mark Online Search System (ATMOSS). This search helps you identify any existing trade marks that may conflict with your proposed mark. It is advisable to seek professional help, such as a trade mark attorney, to perform a comprehensive search, particularly for marks that might not be immediately obvious but could still pose a conflict.

Step 3: Choose the Right Class of Goods or Services

Trade marks in Australia are registered for specific classes of goods or services. The Nice Classification, an international system, divides goods and services into 45 different classes (1-34 for goods and 35-45 for services). Selecting the correct class is essential as it determines the scope of your trade mark protection. Incorrect classification could limit your rights or expose your trade mark to challenges.

Step 4: File Your Trade mark Application

Once you have verified that your trade mark is eligible and identified the correct class, you can file an application with IP Australia. You can choose between two types of applications:

1. Standard Application: A straightforward application that requires all details upfront, including the trade mark representation and the list of goods or services.

2. Headstart Application: This option provides an initial assessment of your application before formal filing, allowing you to address any issues identified early in the process.

Your application must include:

1. A clear representation of the trade mark.

2. A list of goods or services.

3. Applicant’s details (name, address, etc.).

4. Payment of the filing fee.

Step 5: Examination of the Application by IP Australia

Once your application is filed, IP Australia will examine it to ensure it meets all legal requirements under the Trade Marks Act 1995 (Sections 31-33). The examination includes checking for inherent distinctiveness (Section 41) and any potential conflicts with existing trade marks (Section 44). If issues are found, IP Australia will issue an “adverse report,” and you will have 15 months to respond and address the objections.

Step 6: Acceptance and Publication of the Trade mark

If your application passes the examination or you resolve any objections, IP Australia will accept the application. The acceptance is published in the “Australian Official Journal of Trade Marks,“ initiating a two-month opposition period (Section 52). During this period, third parties can file an opposition if they believe your trade mark conflicts with their existing rights.

Step 7: Addressing Oppositions

If an opposition is filed, you will need to respond by defending your application. The opposition process involves several steps:

1. Notice of Intention to Oppose: Filed by the opposing party.

2. Statement of Grounds and Particulars: Details the reasons for opposition.

3. Notice of Intention to Defend: Must be filed by the applicant to continue with the application.

Both parties will have the opportunity to present evidence, and the matter may be resolved through negotiation or proceed to a hearing before the Registrar of Trade marks. The Registrar will make a decision based on the evidence presented, and either party can appeal this decision to the Federal Court of Australia.

Step 8: Registration of the Trade mark

If no opposition is filed, or if any opposition is resolved in your favor, IP Australia will register your trade mark. The Registrar will enter the details into the Register of Trade marks and issue a certificate of registration (Sections 68-71). Your trade mark will then be protected for a period of 10 years from the filing date (Section 72).

Step 9: Maintain and Renew Your Trade mark

Trade mark registration in Australia is valid for 10 years, but it must be renewed before the expiry date to maintain protection (Section 72) and to avoid challenges for non-use, ensure your trade mark is actively used in the market. Continuous non-use for three years may expose your trade mark to removal proceedings (Sections 92-94).

Step 10: Enforce Your Trade mark Rights

Once your trade mark is registered, you have the exclusive right to use it concerning the goods or services for which it is registered. You can authorize others to use it (license) or take legal action against infringement (Sections 20 and 120). Infringement actions can be brought before the Federal Court of Australia, where remedies such as injunctions, damages, or account of profits may be granted.

Conclusion

Registering a trade mark in Australia involves a detailed process with several steps, from determining eligibility to filing an application, undergoing examination, and handling potential oppositions. Each step requires careful consideration to ensure compliance with the legal requirements under the Trade Marks Act 1995 and by securing a trade mark, businesses can protect their brand, build value, and prevent misuse or infringement. Consulting with a trade mark attorney can provide invaluable assistance throughout the registration process, especially in complex cases or when facing opposition.

Why Choose LexGeneris?

At LexGeneris, our team of trade mark attorneys has extensive experience in navigating the complexities of the various IP processes. We offer comprehensive services, from conducting preliminary searches to handling oppositions and appeals. With offices in Perth, Australia, and Bangalore, India, we are well-positioned to assist clients globally in protecting their intellectual property.

Contact Us

For more information or to schedule a no-cost consultation, reach out to us at business@lexgeneris.com. We’re here to help with all your IP needs!