Register a Trademark in Australia
If you are thinking of registering a trademark in Australia, you are in the right place. Trademark Angel offers very competitive prices and is capable of doing all types of trademark work in Australia. Trademark registration process is quite similar to the Canadian process with some notable differences.
Important highlights about the Australian registration process:
- There are two types of applications available: Standard and Headstart
- With a Standard application, your application is assigned a serial number and examined after filing.
- With a Headstart application, your trademark does not appear in the system until it’s reviewed by an examiner and you’ve decided to proceed with publication and advertisment of your trademark.
- With a Headstart application, your trademark will be examined within 5 working days of request and you can talk to the examiner to address any problems. It means your trademark is assessed prior to filing.
- Your trademark is reviewed on absolute and relative grounds and it can be refused if there is a similar mark or if the mark is merely descriptive
- No specimens of use or dates of use are required
- For a straightforward trademark application, you are looking at 8 months before your trademark registers.
Daniel Finn is a Legal Practitioner with over a decade of experience in trademark, intellectual property, and general commercial law. He has started practicing law after graduating from the University of Melbourne law school. In addition to Trademark and IP matters, he assists domestic and foreign businesses in international dealings, incorporation, tax advice, franchise and licensing.
Pricing of Our Packages
The prices are in USD$ for Australia
- Covers filing your application and reporting the progress all the way to registration. 2 classes included. This is our entry-level package.
- Covers full trademark registration, including reporting and responding to non-substantive examiner’s objections and free re-filing.
BELLS AND WHISTLES
- Covers all aspects of trademark registration, including responding to all examiner’s objections and free re-filing. More free extras.
Details about pricing packages
Government fees are not included in our packages and are extra
- Upgrade “SAIL THROUGH” package to “ALL IN” package
- Upgrade “SAIL THROUGH” package to “BELLS AND WHISTLES” package
- Upgrade “ALL IN” package to “BELLS AND WHISTLES” package
It is generally difficult to register geographical names as trademarks in Australia, particularly where these geographical words have an obvious connection with the goods or services being trademarked.
For example, the word MAATSUYKER describes a series of small uninhabited islands off the coast of Tasmania. The trademark office has previously rejected an application for the trademark MAATSUYKER in relation to Seafood (class 29) but accepted the trademark MAATSUYKER in relation to Clothing (class 25). The reasoning is simple, there is an obvious connection between the geographical islands and the fishing industry, thus it is possible that other fishing operators might need to use the word MAATSUYKER to describe their goods. By contrast, it is highly unlikely that there will be many clothing manufacturers on these uninhabited islands who need to use the word MAATSUYKER to describe their goods.
To open in a new tab, click: Are geographically descriptive marks registrable in Australia?
In Australia a merely descriptive trademark is one that has no “adaptation to distinguish” your goods and services from those of other businesses. Some examples of such “merely descriptive” trademarks include words which are used for the normal description of the goods or services.
An example of this is the word “GIANT” in relation to hamburgers, which was held to be a word that was merely descriptive as it was likely to be used by other restaurants in the description of their hamburgers.
You can get more details about descriptive marks here.
To open in a new tab, click: What is considered a merely descriptive trademark in Australia and are they registrable?
Both surnames and full names are able to be registered as trademarks in Australia, but you may face difficulties. For example if your surname is very common (like “Smith”) or if it has multiple meanings (like “Green”), your trademark may be rejected.
To open in a new tab, click: Can surnames or full names be registered as trademarks in Australia?
Given that Australia does not require proof of Intent-To-Use prior to accepting trademark applications, the filing of multi-class trademarks is a much simpler and less risky proposition than in other countries.
The only major pit-fall of multi-class trademark applications in Australia is that you only have three years after the filing of the trademark to begin using it. If you make a multi-class application in classes which you have no intent to use, you may eventually face challenges to your trademark in those classes.
To open in a new tab, click: Is it a good idea to file a multi-class trademark application?
Yes, divisional applications are possible at any stage whilst your trademark is pending. A divisional application will share the same priority date as your initial “parent” application.
To open in a new tab, click: Can an Australian trademark be divided?
In Australia, a trademark can be refused on several grounds including:
– where the trademark conflicts with another registered trademark;
– where the trademark is misleading or likely to cause confusion;
– where the trademark is scandalous (containing obscenity or offensive material);
– where the trademark is not capable of distinguishing your product or service.
To open in a new tab, click: On what grounds can a trademark be refused in Australia?
Australia uses the international trademark classification system, just like the EU or the US.
To open in a new tab, click: What is the trademark classification system in Australia? How is it different?
With an affluent population and good business conditions, Australia is an attractive market for expansion of your business.
Registering your trademark in Australia is a vital step in preparing for your entry into the Australian market. If you believe that you may want to reach customers in Australia at any stage in the future, it is worth registering your trademark today.
Australia is also a vital gateway to China, with its close proximity to major Chinese markets and the historic China/Australia free-trade agreement offering unparalleled opportunities to smart entrepreneurs.
To open in a new tab, click: Why should I bother registering my trademark in Australia?
Yes, it’s possible to claim priority in your Australian trademark if you have filed an application for a trademark in another country within the past six months. Please have a look at our cartoon about priority claim here.
To open in a new tab, click: Can priority be claimed in my Australian trademark from an earlier filed application?
When deciding whether to file for either a word mark or a logo, it is important to keep in mind that a logo must always be used as it is depicted in your application. In addition, if you file your logo in a particular color in the US, you must always use your logo in that particular color.
On the other hand, word marks are somewhat more flexible. When filed in all capital letters, word marks allow the trademark owner to display it in any combination of lower case and upper case letters. For example, if you filed for the word mark TRADEMARK ANGEL ROCKS, you can use it on your goods and/or services as: trademark angel rocks, Trademark Angel Rocks, or TraDeMaRk AnGeL RoCkS.
The flexibility of a word mark ultimately makes it quite appealing as it is not limited to a particular font or color and can be displayed in a combination of upper and lower-case letters. However, filing for a logo can be more advantageous in some situations.
For example, if your mark is found to be descriptive of your goods/services or uses generic words, your mark will generally be limited to the Supplemental Register. A distinct logo, however, can “carry” the mark to the Principal Register despite the descriptive nature of your mark.
Let’s say you want to file for TRADEMARK REGISTRATION CO. for a company that offers trademark registration services. That’s a mark that is descriptive of the services offered, and will therefore would be limited to registration to the Supplemental Register. If this same mark was filed with a distinctive logo, for example:
Then, the logo could provide sufficient distinctiveness to allow registration of TRADEMARK REGISTRATION CO. onto the Principal Register (with a disclaimer for “TRADEMARK REGISTRATION CO.”).
Another situation when filing for a logo is advantageous is when there are similar marks. For example, a client wanted to register the mark HAWQUE with a design element of a flying hawk – for computer software connecting customers to security contractors, in Class 9. We advised that the logo will most likely be registrable but the wordmark alone would be too similar to marks containing the word HAWK providing similar products in the same class. Although we received an office action alleging that the HAWQUE logo mark was confusingly similar to a registered wordmark, HAWQ, that also covered Class 9 computer software, we were ultimately able to overcome the objection. Our client’s logo, HAWQUE, was successfully registered soon after.
In another case, a client wanted to register the mark ESTEEM APPAREL, either the wordmark or the logo. However, in our initial search, we found a very similar, registered mark, ESTEEM CLOTHING. In this case, we advised that the logo would have a greater chance of registration. The client chose to file for the logo instead of the word mark and, although we received a confusion objection based on similarity with ESTEAM and ESTEEM CLOTHING marks, we were able to successfully able to overcome the objection and the mark was successfully registered.
Thus, as can be seen from the above examples, it is important to first determine if your mark is too descriptive to achieve registration in the Principal Register, and whether you intend to consistently display your logo on all of your products, prior to making a decision regarding whether to file for a word mark or a logo. Also, in case there are similar marks, filing for the logo may help to differentiate and ultimately achieve registration of your mark.
To open in a new tab, click: Which trademark should I File? Word Mark or Logo?
What is the difference between company name, business name, domain name and brand or trademark?
What are different types of company, domain, business or brand names? Let’s get the names straight to avoid confusion.
- Company name: Legal name of the company, either registered federally or in a certain state (or province in Canada).
Example: Microsoft Corporation
Note: one company may own more than one brand and may do business under more than one name
- Business name or doing business as: Name under which you conduct your business.
- Domain name: Name of your address on the Web.
Example: www.skype.com (Microsoft owns Skype)
- Trademark: A trademark may be one word, a combination of words, or logos (or even sounds and smells!) used to distinguish/differentiate your products or services from those of other entities.
Example: MICROSOFT, , or a combined mark:
Let’s take another example of a giant retailer Kraft Foods.
Company name: Kraft Foods Inc.
12 of Kraft Foods brands are sold worldwide: Cadbury, Jacobs, Kraft, Maxwell House, Milka, Nabisco, Oreo, Oscar Mayer, Philadelphia, Trident and Tang.
For each brand Kraft Foods has a website: cadbury.co.uk; cadbury.com.au; oreo.com; oscarmayer.com, etc.
Not everyone knows that these 12 famous brands are owned by the same giant! It doesn’t really matter, what matters is that everyone knows where do buy their favorite Cadbury chocolate or Oreo cookies and everyone knows how the Oreo cookies package looks like!
To open in a new tab, click: What are different types of names? Company name vs business name vs domain name vs trademark?
If you simply business incorporate or register a corporate name, it doesn’t mean that the government approved for you to use the name as a trademark.
If we take a US LLC, as an example, every state has its own laws about business names.
You can register your LLC name in Delaware but the business name registration has no impact on the other 49 states.
In plain English, if you register Coolapples LLC in Delaware, another entity may register Coolapples LLC in Indiana. If you plan to expand nationwide or worldwide, trademark registration will provide that protection. A federal US trademark will give you exclusive rights to use your brand name for your products across the US. Likewise, a Canadian or Australian trademark will give you country-wide rights to use your chosen brand in your country and will make it easier for your to sell or license your trademark later.
To open in a new tab, click: Do I need to register a trademark if my business incorporated?
No use is required for filing or registration in Australia, so long as you have an intention to use the trademark in Australia in the near future. There are no filing bases in Australia just like in the UK and EU.
Trademarks must be used in Australia within 3 years of the date of registration. A trademark that is unused for 3 years or more can be removed from the register.
To open in a new tab, click: Do I have to use my trademark in Australia prior to filing? Do I have to use my trademark after registration?
It’s perfectly legal for you to use your trademark without registration. However, if you are using a trademark that is similar to another name that was adopted before you adopted your trademark, you may be liable for trademark infringement.
To minimize the risk of choosing a trademark that’s similar to another name, you should do a trademark search of the Trademark Office database of the country where you plan to use your brand and of the marketplace (check on Internet for similar names usage).
To open in a new tab, click: Can I use my trademark if it isn’t registered?
In different countries trademark opposition process is different.
In the US, trademark opposition period is only 30 days, so you have to be pretty fast if you plan to oppose.
In Canada, one has to file a trademark opposition within a 2-month period.
In the UK, an opposition period is 2 months but can be requested to 3 months upon a request made by a party that intends to oppose.
In the European Union, a notice of opposition must be filed within 3 months following the publication.
In Australia, the opposition period is 3 months from the date of publication.
To open in a new tab, click: How long is a trademark opposition process?
Australia is quite unique as it offers two types of trademark application filings:
- Standard filing
- You get an immediate filing date
- You cannot make changes to your application or list of products/services
- Your trademark is reviewed after filing
- Your trademark proceeds through a standard examination process until registration
- Headstart filing
- This is pre-application services provided by IP Australia
- You pay higher filing fees (AUD$330 vs. AUD$250 per class) but you only pay AUD$200 at the beginning
- Your trademark is assessed by an Examiner before it is filed.
- You get a report within 5 days of filing. Once you get the report you can decide if you want to proceed further. If you want to convert your application into a Standard application, you have to pay the remainder of the fees.
- You can make changes to your trademark or description once you get the report.
- Once your trademark is converted, you get a formal filing date and no more changes are allowed.
- Your trademark proceeds through a standard examination process until it registers
While a Headstart application may be a great choice there are some important drawback of this filing:
Since you don’t get a filing date immediately, what if somebody else filed a similar trademark while you were waiting for the Headstart report?
Trademark Office is not bound by the Headstart report and can issue different objection at a later date.
If your products are unique and not in the picklist, Headstart may not be the best choice since it only allows to pick the products/services from the list of pre-approved goods and services.
How do you know which one to use? We can usually advise when Headstart may be reccommended. If we find similar trademarks and unsure that your trademark will register, we can recommend Headstart trademark application filing first. If you don’t want to invest a ton of money in your marketing campaign and want to maximize your chances for your trademark to be approved, Headstart may be the answer.
Once we receive a Headstart examination report, you can then make a decision whether to proceed with the filing.
To open in a new tab, click: What is a Headstart trademark application in Australia?
It takes a minimum of 8 months to register trademark in the US. If there are office actions (objections from the Trademarks Office), then registration will be delayed. It’s not uncommon for a registration to take a year or longer.
It takes 20 months to register a trademark in Canada. It’s painfully slo-o-ow. Don’t ask us why. We don’t know the answer. We feel your pain though. Hopefully, once Canada joins Madrid protocol things will improve.
You will have to wait for about 7.5 months to register a trademark in Australia.
In the European Union, the registration process is about 6-7 months. Not so bad, but the government fees are very high. If your application is filed using “fast-track” method, then the whole process may take about 4-5 months.
The winner is the United Kingdom, where it takes about 4 months from filing to registration. Added bonus is low government fees.
To open in a new tab, click: How long does it take to register a trademark?
Trademarks can last forever if they are renewed on time. Keep in mind you will have to continue using your trademark to keep it in good standing.
In the US, you must renew your trademark every 10 years. In addition, between the 5th and 6th year after the registration date, you must file an “affidavit of use” to keep the registration alive.
In Canada, a trademark has to be renewed every 15 years (the renewal period will be changed to 10 years soon).
In Australia, European Union and the United Kingdom, you have to renew your trademark every 10 years.
To open in a new tab, click: How long are trademarks valid for?
- Trademark registration in Australia: how to register a trademark in Australia?
- What Every Business Should Know about Trademarks Registration?
- Should I file a trademark now or should I wait
- When should I not file a trademark?
- In Whose Name Should I File My Trademark?
- 11 Trademark Tips: how should I list products and services in my trademark application?
- Taking Advantage of the Trademark Classification & the Trademark Class Systems