Importance before obtaining Trademark Registration in Australia

Step 1: Thorough trademark infringement search

Step 2: The filing of a trademark application

Step 3: The examination of your trademark application

Step 4: The registration of your trademark

Getting Started


STEP 1: Thorough trademark infringment search

We cannot stress highly enough the absolute importance that a thorough trade mark search be conducted prior to either using a name or brand, or filing a trademark application. A thorough trademark search is not the same as doing a Business Name, Company Name or Domain Name search, quite the opposite.

It is imperative that you know beforehand whether or not you can use the mark without infringing upon someone else's trademark, by having relevant searches conducted.

The search (with comprehensive written report) will give you a good indication as to the likelihood of infringing on a registered trademark in Australia.

The report will also indicate the likelihood of gaining acceptance for registration of the trademark, should you proceed with filing an application.

The search not only covers the way a word or words are spelt, but also how it may sound.

Even if spelt differently it may still sound the same or similar to a registered trademark, so we need to ensure this is not the case.

Our search will also take into account any trademarks using the same prefix or suffix as your mark.

The search covers trademarks used to identify the same, similar or related goods/services to your mark.

This search is crucial, as formal examination and registration, if accepted, will not occur for approximately 6-9 months. In the meantime, especially if you have not had a search conducted, you will be using the mark at a great risk.

Having a search conducted will by far reduce any such chances of infringement while awaiting the government authority's official examination and acceptance.

If the search is favourable, then we proceed to the second step. The search report is normally available within 7-10 days after receipt of your instruction to proceed.

Next Step: Require Search & Report

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STEP 2: The filing of a trademark application

This step involves the preparation and filing of a trademark application.

Here you need to identify, specifically, the goods and/or services with which you wish your trademark to be synonymous within the marketplace, either now, or within the next 2-5 years.

These details are required once the search report has proved favourable and when you are ready to file the application.

This part is very important, as once an application has been filed with the goods or services listed, you cannot at any later stage attach any further goods or services to this application without having to file another application for addition costs.

There are 45 different categories or classes of trademark registration. The list of goods or services you provide will determine which class or category your trademark falls into.

The goods and/or services associated to your trade mark may fall into more than one class or category. If this is the situation with your trademark, you would need to file the application to show the different categories.

Once the application has been filed, you can start using the mark with the ™ symbol, but as previously stated, you cannot claim registration of the mark at this stage.

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STEP 3: The examination of your trademark application

This is the formal examination of your trademark and the goods and/or services associated or listed on your application.

This step commences approximately 6-9 months after your application is filed.

If the trademark examiners have any concerns, or queries, with regard to your trademark or application, a report will be sent stating such. You will be given the opportunity to respond to and fix any problems stated in this report.

Once any matters stated in the aforementioned report are cleared up, your trademark will be accepted for registration. It then must be advertised as being accepted for registration for a period of 3 MONTHS. This is known as the "opposition period", whereby other trademark owners are given the chance to oppose the acceptance. They would also need to provide details of why they are opposing the registration of your trademark.

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STEP 4: The registration of your trademark

If there is no opposition your Trademark registration will last for a period of 10 YEARS. At the end of 10 years, you may renew the registration should you still wish to hold the exclusive rights to that particular mark.

Once you receive your Certificate of Registration of a Trademark, you may begin using the ® symbol to replace the ™ symbol.

This means you hold exclusive rights to the use of that particular trademark for all the goods and/or services associated with that particular registration. ( Australia wide. )

Your trademark can be regarded as being an asset of yours, or of the company, which is a tradeable piece of property that you can apply your own monetary value to. This can include all fees associated with the development of the mark throughout its life, such fees associated to its registration, as well as the costs associated with the marketing and advertising of the trademark.

From there on the trademark registration only needs to be renewed each 10 years, without further searching.

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