Trademark Filing Process of Australia

A trademark is used to set one trader’s products and services apart from another. Trademark means: A trademark is a right that is granted for a letter, number, word, phrase, sound, smell, shape, logo, picture and/or aspect of packaging. A registered trade mark is legally enforceable and gives you exclusive rights to commercially use, license or sell it for the goods and services that it is registered under. A trademark can be a letter, number, word, phase, sound, smell, shape, logo, picture, aspect of packaging or any combination of the above.

Advantages of Trademark

The public identifies a certain quality, reputation and image with goods and services bearing a trademark. The more successful a business is the more valuable the trademark becomes. As the owner of a registered trademark you:

[Image Sources : Shutterstock]

• have the exclusive right to use your registered trademark as a brand name for the goods and Services specified in the registration
• have the exclusive right to authorise other people to use your registered trademark for the goods and services specified in the registration
• have a registered trademark that becomes personal property and can be sold
• have a registration that usually covers the whole of the Commonwealth of Australia
• may give the Australian Customs Service a notice objecting to the importation of goods that
Could infringe your trademark;
• can be in a stronger position to stop others from using your trademark registration on the same
Or similar goods or services of your trademark registration.

Process of trademark registration

Firstly, A trade mark can be owned by:
• One or more individuals
• An incorporated company
• The trustee(s) of a trust
• A political body
• A State, Territory or Commonwealth government entity.

As per IP Australia site to apply for a trade mark, the applicant must

• Reside (or have an agent that resides) in Australia or New Zealand, and
• Intend to use the trade mark for the goods and/or services in the application.

Step 1: Examination

• A search should be done before applying for a trademark Know the type of trade mark applicant is applying for
• Understand which class(es) of goods and services to include in the application
• Search existing trademark to see if there are any trademarks being used by other businesses that could impact the chance that the application will be rejected.

An IP Professional or online database like those listed on the IP Australia page can be used for searches.
Applicant is not permitted to add new classes of products and services to the trademark application once it has been submitted and its information published.

Applications can be filed on paper or online. IP Australia will review applications to make sure the desired trademark complies with the Trade Marks Act of 1995 and is not in conflict with any already registered trademarks. Within 24 hours, IP Australia will review the submission within 13 days.

Step 2 Application

1. Application

There are two ways to apply for a trade mark:
• Through our pre-application service (TM Headstart), or
• Through our standard application process.
Costs depend on how many classes of goods and services are listed in the application.

2. What is TM Headstart?

TM Headstart, is an application method for first-time trade mark applicants.

When anyone apply with TM Headstart, an examiner will assess the trademark before applicant formally apply. Applicant will get a feedback and an opportunity to amend application, increasing the chances of getting a registered trade mark.

Which trademarks can be assessed?

Applicant can use TM Headstart for common trade mark types, including

• Words or phrases (e.g., Mitre 10’s ‘Mighty helpful’)
• Words or phrases in a specific font style (e.g., ‘Ford’ in cursive font)
• Logos (e.g. Nike swoosh).

For other trademarks and special registration types, use the standard trade mark application service.

How it works

With TM Headstart, applications are made in three stages. Applicant can save the unnecessary cost by paying the appropriate amount for each stage separately. Strict deadlines apply because this is a service with a quick return. A date missed will cause the application to expire.

Step 1. Applicant must send their TM Headstart application: To send trade mark for evaluation, create an online services account and select “Apply with TM Headstart.”

An examiner will deliver an evaluation report to the online services inbox within five working days. Check the online services inbox regularly to prevent missing deadlines.

Step 2 Amend the application: This is optional method in which applicant may choose to make changes to the application based on the examiner’s report. Once applicant has submitted them through online services, the examiner will re-assess the application and send a new report. Most amendments will attract a fee.

Step 3: Formalize the application: The applicant must turn their informal application into a formal one if the applicant wish to proceed and apply for a trade mark. There is an extra charge for this step. Only minimal adjustments can be made once the trade mark has been properly filed. If the application is approved, the trademark will become operable as of the filing date.

2. Standard Application Online

This method is great for: Customers that feel comfortable filing small numbers of trade mark applications with IP professionals.

Summary: Once applicant has submitted the application, only make minor modifications.
If the trade mark application is accepted, the applicants are protected as of the application date.

Step 3: Documentation: The following are required:

• Identity and contact information (including postal address)
• a picture of the trademark (e.g. an image of applicant’s logo or recording of the sound)
• a list of the products and services that applicant’s trademark is registered for, along with the relevant class number(s)
• Payment information.

Step 4: Filing of Application

To lodge the application:
Create an account with our online services
Fill out the application form.

Step 5 : See the outcome

It usually takes three to four months for the trade mark application to be examined. If the application is successful, the following happens.

The trade mark gets published for two months on the Australian Official Journal of Trade Marks and the Australian Trade Mark Search.

Anyone can oppose the trade mark during this time
If nobody opposes the trademark, or the applicant overturn these oppositions, the trade mark application will be successful.

Author: Neelakshi Joshi, in case of any queries please contact/write back to us at support@ipandlegalfilings.com or IP & Legal Filing.

References

[1] https://founddlegal.com/blogs/legal-resources/how-to-register-a-trademark-australia.

[2] https://www.ipaustralia.gov.au/trade-marks/how-to-apply-for-a-trade-mark.

[3] https://www.adelaide.edu.au/policies/680/?dsn=policy.document;field=data;id=7965;m=view.

[4] https://search.ipaustralia.gov.au/trademarks/search/quick.

[5]https://search.ipaustralia.gov.au/trademarks/journals.