The Trademark Application and Registration Process: Australian and International

Company123 are IP agents that can guide you through the application and registration of both Australian and International trademarks.

Australian Trademarks

Trademarks are a form of Intellectual Property that allows your to distinguish the goods or services of your business from those of other businesses. It gives you exclusive rights to commercially use, license or sell the trade mark. This means that no one else in Australia can commercially use your trade mark within the class of goods and services its registered under.
IP Australia is the government body that regulates all Intellectual Property in Australia. 

Trademark Guidelines

Trademark Process

As IP agents, Company123 can guide clients through the application process, which involves the following steps:
 

Step 1: Conduct an analysis on the likelihood of success for your trademark

This is an optional step but is strongly advised to allow for clients to be well-informed before proceeding to application which can be costly.
This process can involves:

 Trade Mark Search Report, prepared by our trade mark specialists

• A Trade Mark Search Report will outline the likely outcome of your application, highlighting any potential difficulties, problems or potential conflicts.
• The search report will also provide advice in regards to appropriate classes, if the text, phrase or logo needs to be changed as all as well as some general trade mark information.
  
• The search report is a great starting point if you are unsure about Trade Marks, as this allows you to see how likely your mark will be registered without paying the full fee.
  
• Search reports are generally delivered with 5 business days and if you are happy with the outcome, you can proceed to the application.
  

with the option to add an:

 Expedited Analysis Report, coordinated by Company123 with IP Australia which allows for both speedy analysis results and a quicker application process afterwards as well. You can read about this system on the IP Australia website.
For further clarification on how Expedition works feel free to call our specialists at 03 9832 0660.
 

Step 2: Lodging an application

Before submitting an application, there are some simple questions to answer first (when conducting an analysis prior to application, these questions are answered as part of the analysis).

First, what type of trademark are you applying for?

For example, a text or a logo? Each has to be a separate application.  These are the most common types, but there are various specialised and niche types of trademarks, which can be found on the IP Australia website.

Next, what class/classes your trademark should be registered for?

There are 45 different classes, encompassing a wide range of goods and services.

To help you decide what goods or services to list think about the exact nature of your business and ask yourself the following:

    Where do you derive your business income?
    What is the nature of your business?
    What are you known for by your customers/clients?
    What products or services does your business provide?

IP Australia provides a Trade Mark Assist service that can help further determine what classes are best for your trademark.

To lodge an application through Company123, this form has to be filled out.
Once payment is made, Company 123 as IP agents proceed to lodge the same day, and the Notice of Filing is given by IP Australia within 1 business day.
 

Step 3: Examination

Next, the proposed trademark is taken under examination, which ordinarily takes 4-6 months.
With Expedition, this can be cut down to 1-2 months. (important to note that although you will receive early acceptance, for official registration every trademark has to wait at least 7 months)
 

Step 4: Acceptance/Adverse Report

If successful, the trademark will be issued a Letter of Acceptance, and will proceed to Step 5.
If unsuccessful, IP Australia will issue an Adverse Report detailing the issue.
From there, there are often options to overcome the objection.
Sometimes this involves amending the application by limiting the scope, sometimes providing evidence of Prior Use.

Further information can be found here.
 

Step 5: Advertisement to the Public.

During this 2 month period, it is advertised for opposition purposes.
If there is no opposition (which is common), the application will proceed to Step 6.
 

Step 6: Registration

When a trademark is registered, you will receive a Certificate of Registration and the trademark is valid for 10 years, after which it must be renewed.

International Trademarks
 

Company 123 can also handle all your international trademark needs.
International Trademarks can be done concurrently as Domestic Trademarks using the Madrid Protocol system.
 
Claiming Priority

If applying for an international trademark within 6 months of lodging of a Domestic Trademark, the international trademark can claim priority and be backdated to the date of the original domestic lodgement.

All countries covered by the Madrid Protocol can be found here.

For more information on the international trademark process see here or call our trade mark specialists at 03 9832 0660.