5 Tips When Registering a Trade Mark for Your App

Emily Young

• 27 July 2021
• 31 August 2021
• 5 min read

With nearly 4 billion people worldwide having access to smartphones, the number of apps available for download in the app store is enormous. With nearly two million apps available on Apple phones alone, mobile apps are a multi-billion dollar industry that continues to grow each year with no signs of slowing down soon. The vast number of app users also means app development is incredibly competitive. Having a trade mark for your app is one way to get ahead of the fierce competition. To help you navigate the trade mark process, this article will take you through five tips for registering a trade mark for your app.

1. Choose Your Trade Mark

To obtain a trade mark for your app, you must first decide which elements of your branding you wish to protect. Trade marks can have many forms, including a:

• word;
• phrase;
• image;
• song; or
• shape.

The most relevant forms of trade mark for an app are likely to be your app’s name, logo or slogan. If your app has a distinctive jingle, you may also want to consider a trade mark for that. To be eligible for registration, it is a requirement that your trade mark is distinctive. The more unique your trade mark is, the better, so get creative!

2. Check Trade Mark Availability

Once you have chosen your trade mark for your app, you will need to check that your trade mark is available for registration. Your trade mark cannot be identical or deceptively similar to an existing trade mark, so you will need to conduct a trade mark search. You can do this by using IP Australia’s trade mark search tool ATMOSS. ATMOSS allows you to search for existing trade marks and their registration status. Best of all, this search tool is both free and comprehensive.

3. Choose the Right Trade Mark Class

When obtaining a trade mark for your app, it is critical that you register it under the correct classes of goods or services. A trade mark ‘class’ refers to categories of different products and services. The Nice registration system organises these 45 categories, comprised of 34 goods and 11 services. The trade mark class you choose for your app is important, because your trade mark is only protected under the class you apply for registration under. 

For your app, the most relevant trade mark categories are likely to be class 9, which includes computer software available for download, and class 42, which includes scientific and technical services. However, the trade mark class most relevant to you will depend on the nature of your app. You can search the trade mark class options available for registration here.

4. Apply for Trade Mark Registration 

Perhaps the most simple but important tip for obtaining a trade mark for your app is to apply for trade mark registration. To do this, you will need to make an application through IP Australia. This application will require you to pay the applicable fees and provide your relevant details and details of your trade mark. 

After applying for registration and meeting all of IP Australia’s trade mark requirements, your trade mark will be placed on the public trade mark register, allowing all competitors to see your trade mark.

While it is not essential to register your trade mark, a registered trade mark has several benefits that an unregistered trade mark does not have. This includes increasing the value of your brand over time and giving you streamlined access for responding to infringement relating to your trade mark.

5. Consider Other Intellectual Property Protection

While a trade mark can protect the branding elements of your app, it will not protect the app itself. For example, you may wish to consider obtaining a patent to protect the mechanics of your app. However, this can be quite difficult to obtain and requires a very high degree of originality. On the other hand, copyright is an automatically granted form of intellectual property (IP) that will protect your app’s code once established. Therefore, awareness of your other IP options for your app is an excellent way to ensure your app has comprehensive protection.

Key Takeaways

To help stand out amongst your competition, you must have adequate branding. A trade mark is the best way to do this. Five tips for obtaining a trade mark for your app include;

• choosing your trade mark;
• checking your trade mark is available;
• choosing the right trade mark class for your app;
• registering your trade mark; and
• considering complementary IP protection.

If you need help obtaining a trade mark for your app, our experienced trade mark lawyers can help. You can contact them on 1300 657 423 or by filling out the form on this page.

Frequently Asked Questions