A registered Australian trademark gives you the exclusive right to use your brand for the goods and services it covers, and the legal power to stop competitors doing the same. Lasting for ten years from your filing date and renewable indefinitely, it is the only registered intellectual property right that never has to expire.
The registration process takes a minimum of seven and a half months, even when everything goes perfectly. However, roadblocks are common. The two most frequent issues are choosing a name that is too descriptive, or one that is too similar to an existing trademark. Both are usually cheaper to sort out before you file than after.
Trademark services for Australian businesses
Warren's work with us was first class. He helped us navigate a difficult trade mark application process with the utmost clarity and professionalism. Warren went above and beyond to help us get what we required. Very knowledgeable, prompt and easy to deal with - you won't find a better IP lawyer. Thanks Warren!
- Alex Newell
Written by Warren Wong
Registered Australian and New Zealand Patent Attorney and Trade Marks Attorney.
Where should you start?
Most people arrive at one of four points. Pick the one that sounds like you.
You're picking a name and haven't committed yet.
This is often the best time to talk. A ten-minute conversation before you buy the domain and print the packaging can save you a rebrand.
→ Choosing a trademarkYou've settled on a name and want it protected.
You need the application drafted properly, covering the right goods and services, in the right owner's name.
→ Trademark applicationsYou've had an adverse examination report.
An objection has been raised, there's a deadline, and you may have filed the application yourself.
→ Responding to trademark objectionsYou're expanding overseas.
Either through the Madrid Protocol or by filing directly in each country. Which is right can depend on where you're going.
→ International applications.
If none of these sound like you, book a call and we'll work out what you actually need.
What a registered trademark actually gives you
The exclusive right to use your mark in Australia for the goods and services listed in your registration. A registration covering business consulting won't help you against someone using the same name on clothing. Getting the goods and services right at filing is most of the work.
Three other things worth knowing:
It's a right to stop others, not permission to trade. A registration doesn't guarantee nobody else has conflicting rights, including someone with an unregistered mark they've been using longer than you.
It's territorial. An Australian registration stops at its borders. Each country needs its own protection.
It can last forever. Ten years at a time, renewable indefinitely, provided you keep using it. That makes trademarks one of the best bang-for-buck IP assets most businesses will ever own, especially if their brand equity grows over time.
What you can register
Under the Trade Marks Act 1995, a trademark is a sign used to distinguish your goods or services from everyone else's. A sign can be:
A word or words, including invented words
A logo or device
A slogan
A shape, including product or packaging shape
A colour, a sound, or in rare cases a scent
The most distinctive marks are often the ones that mean nothing until you give them meaning. The weakest are the ones that describe what you sell. → Choosing a trademark
How registration works (in Australia)
Filing. The application sets out the mark, the owner, and the goods and services you want covered. The date you file is the date your priority runs from and this can be a crucial detail later down the track.
Examination. Usually three to four months after filing. The examiner checks whether your mark is capable of distinguishing your goods and services, and whether it conflicts with earlier marks.
Objections, if any. If an adverse report issues, you have a minimum of 15 months to overcome the objections. → Responding to trademark objections
Acceptance and opposition. After acceptance of a trademark application is advertised, third parties have a two month window to oppose registration of the trademark. Oppositions are rare and the vast majority of accepted trademark applications proceed to registration without issue.
Registration. f nobody opposes, your mark registers, backdated to your filing date. Protection runs ten years from there.
What if someone opposes your application?
An opposition is a contested proceeding before IP Australia involving evidence and usually a hearing, and it can add substantial time, cost and uncertainty.
If yours is opposed, or you've spotted an application you think shouldn't be registered, get in touch early. Opposition deadlines are short and the first steps shape everything that follows, so this is not a situation to sit on.
What it costs
For a straightforward application covering a single trademark class, budget for around $965 (which includes IP Australia's official fees and GST). Assuming no objections and no opposition, that's the total to get through to registration.
That figure is worth noting carefully, because it is not how most of the industry prices this work. Plenty of firms quote a filing fee and then invoice again when an adverse report issues, again when reporting acceptance, and again to report registration. I don't. If IP Australia sends me something about your matter, I tell you about it without a hefty bill.
I also don’t increase service fees based on how many trademark classes you need (another common industry practice).
My trademark services
Before you file
Choosing a trademark — picking a name that can actually be registered and used
Filing
Trademark applications — Australia and New Zealand
International trademark applications — Madrid Protocol and direct filings through overseas associates
Prosecution and maintenance
Responding to trademark objections — adverse examination reports in Australia and New Zealand, handled directly
Trademark renewals — ten-yearly renewals and deadline management
Related rights
Patents — for how an invention works
Registered designs — for what a product looks like
Frequently asked questions
Do I need a trademark if I've registered my business name?
Yes. A business name registration is an administrative listing. It gives you no exclusive rights and it won't stop someone else registering the same name as a trademark.
How long does registration take?
A minimum of 7.5 months in Australia. Straightforward applications tend to move through without incident. Applications that attract an adverse report take longer, depending on what objections are raised and how quickly they’re addressed.
Should I register the word or the logo?
Usually the word, if the word is what customers ask for. A word mark protects the name however it's styled. A logo registration protects that particular visual. Businesses that can only afford one almost always get more out of the word.
Can I register a name that describes what I sell?
It's harder, often much harder. The more your name simply describes the goods or services, the less it works as a badge of origin, and the more likely it attracts a distinctiveness objection. There are ways through this, but it's easier to choose well at the start.
I've been using my brand for years without registering it. Am I too late?
No, and prior use can help you. But you are exposed in the meantime, and if someone else registers first you may be arguing about it from the wrong side.
Can you handle trademarks in other countries?
Yes, either through the Madrid Protocol or through associates in the relevant countries.
Where to from here?
If you're choosing a name, the most valuable conversation happens before the domain is bought and the signage is printed. Book a complimentary call: