Trade mark FAQs
We’ve covered many of the common trade mark questions here, but if you need further assistance please ask us.
A trade mark can be any word, name, signature, device (e.g. a logo), brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of these things, including a three dimensional object or design (subject to certain resections).
There are two fundamental requirements a mark must meet to be capable of registration:
- the mark must be capable of being represented graphically (text, graphic); and
- the mark must be capable of distinguishing your goods or services from those of other traders (see What sort of objections can IP Australia have? below).
- Registering your mark gives you an enforceable legal right to prevent third parties from using such mark (or any mark which is deceptively similar or substantially identical) in respect of similar goods and services to those produced or provided by you under your registered mark;
- A registered trade mark is a property right and therefore a valuable asset for your business; and
- It is much easier to show that you are the legal owner of a mark when you own the registered trade mark, as otherwise you need to produce evidence of use of the mark in order to prove that you should be entitled to be the exclusive user of that particular mark.
On average it will take 6 months to complete. If there are any objections from the examiner at IP Australia or from third parties it may take longer. Take a look at the process for registering a trade mark.
Marks are registered in specific classes. By international agreement, all goods and services to which marks can conceivably be applied are divided into 45 classes. Classes 1-34 cover goods and classes 35-45 cover services. You can apply to register a mark in multiple classes on the same application. The classes are generally the same from country to country which makes registering in other jurisdictions a relatively simple process.
Take a look at the table of classes.
Common law trade marks are marks that have been used over a substantial period of time and have established a reputation in the market, but have never been formally registered as trade marks.
When seeking to prove ownership of a common law trade mark it is necessary to prove evidence of the use of the mark, including sales figures, copies of advertisements and so on and it may also be necessary to provide evidence from the industry of the mark’s reputation.
A trade mark can be owned by an individual, company or other entity (such as an incorporated association or trust). The applicant will usually be the individual or company that created and owns the trade mark in Australia. International entities may file applications in Australia as long as they provide an Australian address for service.
We recommend this search if you have been using the proposed mark in Australia for some time or only intend to use the mark in Australia.
It includes searches of:
- the Australian Trademarks Register for identical and similar marks in classes which cover the goods/services with which the proposed mark is associated and appropriate associated classes;
- Australian company and business names registries; and
- key top level and Australian domain names.
We recommend this search if your proposed mark has not been used before and/or if you plan to use it overseas or online.
It includes searches of:
- the Australian Trademarks Register for identical and similar marks in classes which cover the goods/services with which the proposed mark will be used and appropriate associated classes;
- Australian company and business name registries;
- key top level and Australian domain names;
- common law (unregistered) marks in Australia, including relevant business directory and internet searches depending on the goods/services covered by the proposed mark; and
- a basic search of US, UK, New Zealand, Canadian and European Community trade marks databases.
Our competitive fees start from AU $330 for a Basic Trade Mark Search. We can search, prepare and lodge your application and register your trade mark for you. See the full list in our fee table. All fees shown are in Australian dollars and include GST.
International Trade Mark application fees depend on the countries in which the application is filed, and are available upon request.
Other Professional Fees
If there are any requisitions by the examiner or objections from a third party, we may need to prepare a response. The timing for responding varies, but we have a fixed hourly rate of AU $275. We advise you of the costs to responding prior to commencing work and keep you fully informed on our progress throughout the process.
All fees shown include GST.
If there is a similar trade mark registered in relation to goods and services similar to your own, we will need further information from you regarding your prior use of your proposed mark.
If your use pre-dates the registration filing date of the other trade mark, it may be possible to obtain registration of your mark by providing evidence of your use. However if you have not yet commenced using the mark, we may recommend changing your mark so that it is sufficiently different to the existing registration.
The examiner may issue a report requesting a clarification of the description of goods and services, listing registered trade marks and applications which conflict with the mark, and/or setting out queries as to whether the mark is capable of distinguishing your goods and services.
A mark will be taken to be in conflict with your mark if it is:
- identical or deceptively similar to your mark (e.g. where it is the same word spelled differently, or a similar combination of words and/or images); and
- registered in relation to similar goods or services.
A mark will be regarded as incapable of distinguishing particular goods or services from those of other traders if the mark is descriptive of the goods or services it represents. A mark that is regarded as not capable of distinguishing may, however, become distinctive and capable of registration with significant use over time. Evidence of such use would have to be filed with the IP Australia in order to render such a mark capable of registration.
The trade marks examiner will advise of any such objections in a written report issued after the trade mark application is filed, and we then have the opportunity to respond to that report and submit any relevant evidence.
Our searches of the Australian and international trade mark registers is subject to the following qualifications:
- The results of the search only reflect the accuracy of the relevant trade mark office records and computer facilities. We cannot guarantee the accuracy or completeness of these records and facilities. Applications filed in the few weeks prior to the date of the search may not be available for searching purposes; and
- If an application to register a mark has been made within the last six months in another country which is a signatory to the Paris Convention (most countries are), it is possible to backdate the Australian application to the filing date of the corresponding overseas application. As a result, a search of the Australian register cannot be conclusive because it will not reveal marks similar to yours applied for overseas within the last six months. It is partly for this purpose that we include a basic search of the major international territories in our Comprehensive Search Package – to try and identify potential conflicting convention applications, although of course this is subject to the same constraints as a search of the Australian register.
Subject to certain restrictions, your mark is protected from other applications filed after it, no matter how long your application process takes.
Once registered you mark will be protected for a period of 10 years from the initial application date. This registration can be renewed for successive 10 year periods on payment of a renewal fee, subject to the mark still being in use.