How to get a registered trade mark

There are multiple steps involved in filing a trade mark application, and many considerations that a business must keep in mind.

Step 1: Conduct preliminary searches

Before filing a trade mark application, it is important to run clearance searches on the Trade Mark Register and other databases (such as domain name searches) to ensure the trade mark is available for the preferred goods or services. If there is an existing trade mark that is the same or similar as yours, it may be difficult to get your trade mark registered. A registered trade marks attorney knows what to look out for when undertaking these searches and can give you a risk assessment about the likelihood of your trade mark being accepted by IP Australia.

Step 2: Identifying the correct trade mark owner

It is vital that the correct owner files the trade mark. If the incorrect owner is listed at the time of filing the application, this mistake cannot be fixed and can result in costly issues down the track. A trade mark can be owned by one or more individuals, a company, the trustee(s) of a trust, a political organisation, or a government entity.

Let’s say that ABC Pty Ltd is a business operating under the trade mark ‘ABC’. The director of ABC wants to file a trade mark application for ‘ABC’. The entity ABC Pty Ltd would need to be listed as the owner of the trade mark at the time of application and not the director filing the application.

A registered trade marks attorney can help you identify the correct trade mark owner when preparing your trade mark application.

Step 3: Determine what goods or services you need your trade mark to cover

A registered trade mark only provides exclusive rights for the goods and services listed in the application and accepted by IP Australia. It is important to select all applicable goods and services your trade mark covers because after the application is submitted, you cannot add goods and services. IP Australia’s picklist gives you an idea of the kinds of goods and services that you can claim, however you can also claim items that fall outside this list. A registered trade marks attorney is skilled at identifying the goods and services relevant to your business to ensure your registration will cover all necessary items.

Step 4: Filing your application

If you are looking to self-file a trade mark, you will need to create an account with IP Australia’s online services. After, you will need to fill out the application form. This includes adding the relevant ownership and contact details, a representation of the trade mark, listing the goods or services and their related class numbers (groups of goods and services), and arrange payment of the government filing fee.

Step 5: Receive the examination

Trade mark applications typically take between 3 and 4 months to be examined by IP Australia. If your application is successful, your trade mark will be published for 2 months on the Australian Official Journal of Trade Marks. During this period, another party may oppose your trade mark. After this period has passed with no oppositions (or if you overcome any oppositions), then your trade mark will proceed to registration.

If IP Australia considers there are issues with your trade mark application, they will issue an adverse examination report. Applicants have 15 months to overcome those issues. Often those issues can be quickly resolved by a registered trade marks attorney so your trade mark can be accepted by IP Australia.

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