3 Things to Consider When Determining the Perfect Time to File a Trade Mark Application
Emily Young
The trade mark process is foreign to many people, particularly those establishing new businesses. You might wonder when the best time to file a trade mark application is. For example, should you file a trade mark application before launching your business? Or should you wait until your business has been up and running for a while?
Registering your trade mark can take at least several months. As such, it is best to register your trade mark as early as possible. However, there are several factors you should consider when determining the best time to register your trade mark.
This article will take you through three things to consider when determining the perfect time to file a trade mark application.
1. Decide If You Have a Trade Mark
Before registering a trade mark, you should consider what you want to register as a trade mark. This question is particularly important for new businesses that are still establishing a brand. For example, consider you have recently designed a logo for your business. Are you certain that you will stick with that logo in the future? Or is there a possibility that your logo will change significantly in the coming months or years as your business evolves?
If your brand is still in its early stages, it can be difficult to decide if you are satisfied with it and, therefore, ready to register your trade mark.
This process also requires you to ensure that your trade mark is sound from a marketing perspective. Your trade mark should be memorable and not have any offensive connotations. A strong trade mark will be unique and stand out from your competitors.
In addition to determining if you are satisfied with your branding, you should also consider whether your trade mark is likely to meet the requirements for registration. For example, you cannot register a trade mark that is:
- restricted by legislation, such as words relating to the financial sector;
- a word or sign prohibited by international conventions, such as flags, emblems, or the names of international intergovernmental organisations;
- an offensive or degrading term, word or image;
- a commonplace word or image regularly used by others in your industry; or
- a word or phrase descriptive of the goods or services for which it is being used.
If your trade mark falls into any of the above categories, you may have difficulty registering it.
2. Consider if Your Application is Ready
Once you have decided on your trade mark, you should consider if your application is ready. There are a few components that go into determining this.
Firstly, you should conduct a trade mark search. A trade mark search will allow you to see if anyone else has registered or applied for a trade mark similar to yours. If similar trade marks exist, IP Australia will likely refuse your application.
For Australian trade marks, you can conduct a trade mark search on the Australian Trade Marks Online Search System (ATMOSS). You may also want to consider conducting an international trade mark search if you are looking to register your trade mark overseas.
Next, you will need to establish who the trade mark’s owner will be. If you are trading under a company structure, the company will usually own the trade mark. You might choose to register the trade mark under your own name if you are currently trading as a sole trader. You can also assign the trade mark to the new company after it has been registered if the trade mark is to be used by a company that is yet to be formed.
At this stage, you will also need to select the trade mark classes you will use for your application. The Nice classification system divides trade mark classes into 45 different categories, comprising 34 goods and 11 services. The trade mark classes you select are important because they define your protection scope.
Your trade mark is only protected under the classes you select in your application.
3. Understand Timelines
Once you have chosen your trade mark and have determined that the application is ready to proceed, you will be in a position to make your trade mark application. While it might seem like you have done the bulk of the application process at this stage, you will need to consider the time that the entire registration process will take.
After you file your trade mark application, IP Australia will examine your trade mark and notify you if there are any issues with your mark preventing it from being registered. The examination process can take several months, even with no issues.
Once your trade mark passes the examination stage, it will be published on the trade mark register and the Trade Marks Journal for two months. This opposition period allows third parties to oppose your application. If your mark is unopposed, your trade mark will proceed to registration. However, if someone objects, you must respond to this objection to defend your application.
It takes several months to register a trade mark, even when the process is straightforward. This is an important factor to consider when determining the right time to file your trade mark application. Noting how long it takes, it is recommended that you apply for registration as soon as possible.
Key Takeaways
Registering your trade mark can be a time-intensive process. As such, the sooner you file your application, the sooner your trade mark will be considered for registration. However, before rushing to file your trade mark application, you should ensure that:
- you have a trade mark capable of being registered; and
- your trade mark application is ready to be filed.
If you need assistance understanding when the perfect time is to register your trade mark, our experienced trade mark lawyers can help. Get in touch with them on 1300 657 423 or by filling out the form on this page.
Frequently Asked Questions
Generally speaking, the earlier you apply for a trade mark, the better. Registering a trade mark early will reduce the chances of a third party applying for a similar trade mark before you. However, before making a trade mark application, you should ensure that you have a trade mark capable of being registered and that your trade mark application is ready to be filed.
There are several benefits to applying for a trade mark as soon as possible. A trade mark can ensure brand security in a competitive market and help establish your brand reputation, which is important to do as soon as possible. A registered trade mark can also help you avoid legal disputes, meaning the earlier your trade mark is registered, the better. Further, the date you file your trade mark secures you a ‘priority date’. This means that your application will be given preference over applications filed later.