Where Do I Register a Trade Mark?
Emily Young
Trade marks are an excellent tool for protecting your brand and helping it stand out against your competitors. Registering your intellectual property (IP) provides an extra level of legal protection and an avenue to market your business without others infringing on your brand.
To help you better understand the trade mark registration process, this article will take you through the appropriate place to register your trade mark. It will then discuss the main steps you will need to take to register your trade mark successfully.
Australian Trade Marks
If you want to register your trade mark in Australia, you must register your trade mark with IP Australia. IP Australia is Australia’s national trade mark office and offers an easy online method for registering trade marks. In 2020 alone, more than 80,000 trade mark applications were filed with IP Australia – an 8% increase from 2019.
Through IP Australia’s website, you can both apply for and renew your trade marks. You can also manage your applications and pay any required fees.
International Trade Marks
If you are planning to expand your business internationally, you should consider international trade mark registration. There are several benefits to registering an international trade mark. Importantly, international registration lets you expand your business overseas without infringing on someone else’s trade mark.
The Madrid System (or Madrid Protocol) is the primary system for international trade mark filings. It facilitates trade mark registration and gives your trade mark protection in up to 124 member countries. Unfortunately, no system allows you to file a trade mark in every single country simultaneously. Therefore, you will need to make a separate trade mark application to a non-member country’s own trade mark office.
Steps to Register a Trade Mark
1. Choose Your Trade Mark
The first step in registering a trade mark is choosing the asset that you wish to register. This might include your business name, logo, slogan or song. Once you have decided which of your assets you wish to trade mark, you will then need to determine if your trade mark meets the legislative requirements for a trade mark. The legislation includes a requirement that your trade mark is distinctive. You can check whether your trade mark is distinctive from other registered trade marks by conducting a trade mark search.
The best way to conduct a trade mark search for Australian trade marks is by using IP Australia’s ATMOSS search tool. However, if you are looking for international trade marks, the World Intellectual Property Office’s (WIPO) Global Brand Database will be the best place to look.
2. Select a Trade Mark Class
Once you have determined the trade marks you wish to register, you will need to select a trade mark class. Trade mark classes refer to the classification system that separates the different categories of goods and services available for trade mark registration.
Like many other countries, Australia uses the Nice classification system. This system breaks down goods and services into 45 different classes available for registration. Your trade mark will only be protected under the classes that you select at the time of your application.
3. Make an Application
Once you have determined your trade mark is available for use and have decided how you intend to use it, you should apply to register your trade mark. You will need to apply through the IP office most relevant to you, such as IP Australia for Australian trade marks. IP Australia will then assess your application to determine if it meets the requirements for registration.
Typically, trade mark registration lasts for 10 years. After this, you will need to renew your trade mark and pay the renewal fees to continue accessing your trade mark rights. You will need to do this for each country or region your trade mark is registered.
Key Takeaways
Where you register your trade mark depends on where you operate your business and where intend on using your trade marks. Accordingly, you may wish to register your trade marks with:
- IP Australia for Australian trade marks;
- WIPO for international applications; or
- individual countries’ IP offices.
If you need assistance registering your trade marks, our experienced trade mark lawyers can help. You can contact them on 1300 657 423.
Frequently Asked Questions
Where you register your trade mark will depend on where you operate your business. In Australia, you must register your trade mark with IP Australia. Alternatively, if you plan to expand your business internationally, you should consider international trade mark registration. This might include registering your trade mark through the World Intellectual Property Organisation (WIPO) or the IP office of individual countries.
The key steps for registering a trade mark include ensuring you select a trade mark that meets the legislative requirements for registration. As part of the legislative requirements, your trade mark must be distinctive from other registered trade marks. You will also need to ensure you have chosen the most relevant trade mark classes for your trade mark. Lastly, you should make sure to apply for trade mark registration with the relevant IP office.