5 Tips For International Companies Registering a Trade Mark in Australia

Emily Young

• 24 January 2022
• 24 January 2022
• 5 min read

Your intellectual property (IP) comprises your business’ most valuable assets. This includes your trade mark registrations, which are an excellent way to protect your brand in domestic and overseas markets. With more businesses extending the availability of their products and services overseas, the ability to protect your brand internationally becomes even more important. This article will walk you through five tips for international companies registering a trade mark in Australia.

1. Assess Eligibility

Once you have decided to register a trade mark in Australia, you must first consider if your trade mark is registrable. Australia’s trade mark office, IP Australia, has several rules and restrictions it will consider when assessing your trade mark for registration. For example, you may have difficulty registering trade marks that are:

• words describing goods or services;
• offensive;
• commonly used words or phrases;
• acronyms or abbreviations commonly used in relations to goods or services;
• geographical names; and
• surnames.

In addition to the above, there are several restricted words relating to banking and financial services, which are reserved only for those with authorisation from the Australian Prudential Regulatory Authority (APRA).

2. Search for Trade Marks 

In addition to the rules and restrictions for trade mark registration outlined above, your trade mark cannot be identical or too similar to a trade mark already registered in respect of a similar good or service. To ensure you do not infringe an already registered trade mark, you will need to undertake a thorough trade mark search.

You can conduct a trade mark search using IP Australia’s ATMOSS search tool. This free search tool has several search functions to make your search as accurate as possible. For example, ATMOSS has word search and image search functions, so you can be specific. ATMOSS’ advanced search function also enables you to do a combined image and word search. This ensures you do not miss anything during your search. You can also search by trade mark classes to narrow down the results.

3. Consider Registration Options

If you have an existing Madrid Protocol registration, you can add Australia as a designation (either at the time of filing or later). Alternatively, you can file a separate national application directly with IP Australia. There are multiple ways to apply for a trade mark directly with IP Australia. This includes:

• filing an online application using the eServices platform;
• applying by post; or
• with the assistance of an IP professional.

If you would like to receive a fast-tracked preliminary assessment of trade mark application, you might also want to consider IP Australia’s pre-application service, TM Headstart. TM Headstart is a fast turnaround service that will assess your trade mark’s eligibility for registration within five business days of submitting your request (rather than a 4-5 month timeframe for examination of a standard application). Many trade mark applicants benefit from knowing as early as possible if their trade mark application is likely to encounter any obstacles. 

4. Understand Processes

Before registering a trade mark in Australia, you should also familiarise yourself with the process involved. Once you have selected your trade mark and determined its availability, you will be able to submit a trade mark application. This will require details about you (the trade mark owner) and your trade mark and require you to pay a filing fee. Suppose your trade mark meets all of IP Australia’s trade mark requirements. It passes through the examination, advertisement and opposition phases of the application process. In that case, it will then proceed to registration.

However, other people may dispute your trade mark registration during the opposition period. IP Australia might consider your trade mark as ineligible for protection during the examination period. The trade mark amendment process or the response to an objection can make the registration process take months or even more than a year. Therefore, you must consider the complexity and long term nature of the trade mark registration process before applying to register your trade mark. 

5. Renew Your Trade Marks

Once your trade mark has been placed on the trade mark register, you will have trade mark protection for an initial 10 year period. Before this 10 year period expires, you will need to renew your trade mark to maintain your protection. This will incur renewal fees.

In addition to renewing your trade mark, you must continue to monitor your trade mark for infringement. Ensure that others are not using your trade mark for their own use. Where you consider that somebody has infringed your trade mark, you may need to enforce your exclusive trade mark rights.

Key Takeaways

More businesses are extending the availability of their products and services overseas. Therefore, the ability to protect your branding becomes even more important. Before registering a trade mark in Australia, you should:

• assess eligibility;
• search for trade marks;
• consider registration options;
• understand processes; and
• know the renewal processes.

If you need assistance registering a trade mark in Australia, our experienced trade mark lawyers can help. You can get in touch with them by calling 1300 657 423.

Frequently Asked Questions