The trademarking process in Australia is a multi-step process with various considerations throughout. However, it mainly consists of seeing whether a trademark is the correct type of intellectual property, determining the class of the product, searching for similar trademarks, applying for a trademark and acting on the outcome of that application.

1. Is a trademark the right type of intellectual property for the product or service?

A critical question that must be answered before going ahead to lodge a trademark application is whether what you want to register is, in fact, a trademark.

A common error made in this regard is confusing the type of intellectual property type applicable. For instance, designs have their own separate mark known as a design mark, just as expressions of ideas fall under copyright.

Some other considerations are whether you meet the eligibility requirements to register a trademark. These requirements state that an applicant must either be a company, incorporated association or an individual. They can also be more than one of these. Neither can the applicant be a business or trading name.

2. How do I determine the trademark Class of the Product?

The class of good and services the product falls under must initially be determined before making a trademark application. There are over 45 classes in Australia, and it is vital that the correct class is isolated so as to ensure that the trademark extends to those particular goods and services.

Although Intellectual Property (IP) Australia provides a classification search tool, it is also worthwhile making an assessment of factors such as the nature of business activities, what your customers identify the product/service to be and where you derive your business income from. Of course, this is a case by case analysis, so there will always be individual factors to take into account

3. How to search for trademarks?

IP Australia’s trademark search tool will assist an applicant in finding whether a name or logo has previously been registered, if your trademarking will infringe on the rights of another owner and whether there are trademarks that share similar features with yours. It allows you to view if a surname is already registered as a trademark and see images of registered trademarks. There is also the option of saving search preferences and results to return to them at a later point in time.

4. How to apply for a trademark?

You can choose to apply for a trademark either online or via a pre-application service offered called TMT Headstart offered by IP Australia. The latter option is preferable for those who are unsure of the application process. On putting in the pre-application request, you receive feedback from a trademark examiner, on which basis you can decide whether to convert a pre-application to an application or make the amendments suggested by the examiner. This application need not be completed in one session.

Certain requirements must be checked off before and included in an application for a trademark. These are the filing fee, contact details, a description of the goods and services, a list of the applicable classes and a representation of the trademark

5. How to proceed while waiting for and after the application outcome?

The typical processing time for a trademark to be examined is 3-4 months. If successful, confirmation will be received of the trademark registration by post. Following this, the trademark will be advertised as accepted for two months. Once this period has elapsed, the trademark will be registered.

However, if there are some issues with the application and if it comes back with an adverse examiner’s report, you have 15 months in which to respond and for the examiner to subsequently evaluate your response.

If this response is rejected, another adverse examiner’s report will be issued, and the process will begin anew with the 15 month response period.

In the event that the 15 months lapses, there is the option to apply for an extension if necessary.

Key Takeaways

Each step in the trademark application process should be carefully considered and checked to ensure all the information and requirements are reasonably satisfied. If you have questions relating to the registration process, call 1300 544 755 to speak to a member of LegalVision’s Intellectual Property team.

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