Trade Mark Pre-Filing Considerations

Australia operates under a “first-to-file” trade mark system, which means that the first person to apply for a trade mark is usually granted exclusive rights even over a business that may have used the mark earlier without registering it. This makes timely and well-prepared applications critical. However, simply filing early is not enough; a poorly chosen or poorly drafted application can lead to objections, rejection, or even loss of rights down the line.

Trade Mark Availability and Clearance Searches

Before filing, it’s essential to check whether your proposed trade mark is already registered or too similar to existing marks on the Australian Trade Marks Register. Skipping this step can lead to costly legal disputes, opposition proceedings, or forced rebranding.

A professional clearance search will identify-

• Identical or confusingly similar marks already registered or pending.
• Potential opposition risks from rights holders.
• Conflicts in related goods or services under similar names.

Who Is Eligible to Apply for a Trade Mark?

Under section 27(1)(a) of the Trade Marks Act 1995, only the person who claims to be the owner of the trade mark may apply for its registration. However, this isn’t just about ownership in the abstract, it also requires a practical link to the mark’s use.

To satisfy the eligibility under section 27(1)(b), the applicant must:

• Be using or intend to use the trade mark;
• Authorize or intend to authorize another to use the trade mark; or
• Intend to assign the mark to a body corporate that is about to be formed, with the view that the new entity will use the mark.

This ensures that the trade mark isn’t being registered speculatively or fraudulently.

Who Counts as a “Person” for Filing Purposes?

“Person” under Australian trade mark law has a broader legal meaning. It includes-

• Individuals
• Companies
• Incorporated or unincorporated associations
• Political bodies

However, the law is equally clear about who cannot be listed as an applicant-

• Trusts
• Business or trading names
• Australian partnerships
• Other unincorporated entities that do not have legal personality

In cases involving trusts, the application should clearly state the legal name of the trustee. For example: “Jane Smith as trustee for the Smith Family Trust”. Also, where the trade mark is owned by a corporation, it must be filed under the company’s name, not that of its shareholders, directors, or associated individuals. Filing under the wrong name could compromise your rights or even invalidate the application altogether.

What Happens if the Applicant is Incorrectly Named?

If an applicant is identified without legal personality, the Registrar will raise a query during the examination process. The application will not be accepted until the issue is resolved, as per Section 27(2)(c). However, the law does offer some flexibility as Section 65(8) allows for an amendment to correct the applicant’s name, provided the correct legal person is substituted.

Ownership is not automatically investigated at the time of filing. But if a third party challenges the claim before acceptance, it could lead to opposition proceedings. Therefore, clarity and accuracy in identifying the correct owner are critical safeguards.

What If the Filing Requirements Are Not Met?

If an application fails to meet the minimum standards, i.e. the basic requirements those are needed at the time of applying –

• The Registrar will notify the applicant within 14 days.
• The applicant has two months to rectify the deficiencies.
• If corrected in time, the filing date will be the date the correction was received.
• If not rectified, the application is treated as not filed, and fees will be refunded.

This two-step grace mechanism provides a buffer, but delaying corrections can compromise your trade mark priority or leave your brand exposed to competing claims.

Global Strategy and Overseas Protection

For businesses intending to expand internationally, the timing of your Australian application can impact your global rights. Australia is a member of the Madrid Protocol, an international treaty that facilitates trade mark protection in multiple jurisdictions through a single application. So, you can file an international application via the Madrid system within six months of your Australian filing and still claim the same priority date. This means an early, well-structured Australian application can serve as a launchpad for global protection, i.e. particularly valuable when entering competitive foreign markets.

It can be crucial to consider which countries you are likely to expand into and whether you want to secure early protection there. Planning for Madrid filings early helps avoid missing the six-month priority window and reduces the risk of foreign entities registering conflicting marks in those countries.

Three-Year Non-Use and Commercialization Planning

Australian trade marks are vulnerable to non-use cancellation if not used in commerce within three years from the date of registration. This is a critical consideration when filing trade marks in advance of a product or service launch. If your commercial rollout is significantly delayed, your registration may become open to challenge by a third party on the grounds of non-use under Section 92 of the Trade Marks Act.

Therefore, your pre-filing strategy should align with your commercialization timeline. If the mark will not be used within a reasonable period, you may consider delaying the application or securing an extension through licensing or other demonstrable preparations for use.

Word Mark, Logo, or Both?

Another crucial branding decision before filing is whether to register the word mark, logo mark, or both. A word mark protects the textual name in any stylization, making it a versatile asset, especially for businesses planning varied design applications or multiple branding formats. A logo mark, on the other hand, protects the specific visual appearance of your brand, i.e. including stylized elements and fonts, but offers limited protection if the mark is used in a different form.

So, for strong protection, many businesses opt to file both, either separately or as a combined application. That said, however, filing both types increases costs and should be weighed against the distinctiveness of each element. If budget is a constraint, securing the word mark first may offer broader flexibility.

Preparing to file a trade mark in Australia involves more than completing an application form. It is a legal and commercial strategy that affects branding, expansion, enforcement, and longevity.

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.