The Australian trade mark registration process
Trade mark registration is the best way to stop counterfeiters
The key steps towards registration include:
- Pre-filing search
- Filing a trade mark application with IP Australia
- Examination by IP Australia
- Acceptance for registration
- Oppositions to registration
- Registration of the trade mark
1. Pre-filing search
Before adopting a new trade mark and applying to register it, we recommend the optional first step of a trade mark search. This will give a good indication of whether the mark is available for use and the likelihood of obtaining registration.
2. Filing an application for a trade mark registration with IP Australia
Your trade mark application will include a copy of the trade mark and a description of the goods or services you currently use or intend to use your trade mark on.
3. Examination by IP Australia
Approximately three to six months after filing, your application will be examined by IP Australia, although you can seek an expedited examination.
Many applications pass examination without objection, although it is not uncommon for objections to be raised. If the Examiner raises any objections, you are given an opportunity to overcome them through argument and/or amendment of the application.
If your application meets all the requirements, your trade mark will be accepted for registration.
You have 15 months from the date of the Examiner’s first report to overcome any objections by the Examiner and to have your application accepted. An extra six months is available upon payment of extension fees.
4. Acceptance for registration
Acceptance of trade mark applications is advertised on IP Australia’s website, at which point they are open to a two month opposition period.
Third parties are given two months to oppose registration of your trade mark. Anyone who believes your trade mark should not be registered may oppose its registration within two months of the advertisement date.
If your application is opposed, it is your responsibility to defend this action. The cost of defending such a challenge depends on a wide range of factors, including the interested party’s conduct.
Oppositions are not common.
Following the opposition period, if no opposition is filed against your application or if an opposition is unsuccessful, your trade mark will be officially registered following payment of the government registration fees. Your trade mark will be recorded in the Register of Trade Marks and a certificate of registration issued.
Your trade mark will be registered from the date you filed your application. Once registered, your trade mark becomes an enforceable legal right.
How do I register a trade mark internationally?
An Australian trade mark registration provides protection only in Australia. To protect your trade mark overseas, you will need to register it in each country of interest. It is usually advisable to register your mark in each country where you manufacture or sell products, or are licensing your trade mark (or plan to do any of these things).
With solid international experience and an international network of associates, we are ideally placed to protect your trade marks internationally. See international protection for more details.