Navigating the Australian Trademark Application Process: A Step-by-Step Guide for Australian Businesses

The Australian trademark application process involves several key steps, from initial consultations and preparing the application, to examination, registration, and ongoing renewal requirements. This detailed guide builds on our trademarks FAQ and is designed to help you understand the application process and what to expect at each stage.

1. Initial Consultation and Trademark Search

Before filing a trademark application, it is important to engage in thorough preparation to increase the likelihood of success. This includes:

Discussing the Proposed Trademark: The first step is to consult with an Australian trademarks attorney to discuss your proposed trademark, which could be a word, logo, slogan, or a combination of elements. The discussion covers what the trademark represents and how it will be used to distinguish your goods or services from those of competitors.

Preliminary Freedom-to-Operate Searches: Conducting a preliminary search is crucial to assess the likelihood of success before filing the application. This search includes the Australian Trade Marks Register to identify any existing trademarks that may be similar to yours, as well as broader searches in commercial databases and online platforms. Freedom-to-operate searches help to identify potential conflicts, reducing the risk of opposition or rejection later in the process.

Trademark Specification: One of the most critical aspects of the application is accurately specifying the goods and/or services in respect of which you wish to protect your trademark. This requires careful consideration of your current business activities and future growth plans. Your trademarks attorney will work with you to draft a comprehensive and detailed specification that covers all relevant categories of goods and/or services under the Nice Classification system. It is important (and often more cost-effective) to ensure that the specification is broad enough to provide full protection but not so broad as to invite unnecessary objections or challenges.

2. Filing the Trademark Application

Once the preliminary searches and discussions are complete, the next step is filing the application with IP Australia. The key elements involved in this stage include:

Filing Requirements: The application must include the trademark representation (e.g., a word or logo), a list of the goods and/or services for which the trademark is being applied, and the applicant’s details. It is crucial to ensure all information is accurate and complete, as any errors can result in delays or additional fees. It is worth noting that once the application is filed, very limited amendments can be made.

Filing Options: There are two main filing options:

  • Standard Application: This is the traditional route, where the application is examined up to four or so months after filing.

  • TM Headstart Service: This is an expedited pre-assessment service that allows applicants to receive feedback on potential issues before formally filing. If no issues are found, the application can be converted into a standard application.

Claiming Priority: If you have filed a trademark application in another country within the last six months, you may be able to claim priority from that application under the Paris Convention, giving your Australian application the same filing date. By the same token, overseas applications may be able to claim the priority date established by the filing of your Australian trademark application.

3. Examination of the Trademark Application

After filing, IP Australia will examine your trademark application to ensure it meets the legal requirements under the Trade Marks Act 1995. This process can take several months, and the following issues commonly arise during examination:

  • Distinctiveness objection: IP Australia may object to a trademark on the basis that it is not inherently distinctive. For example, trademarks that are too descriptive of the goods or services (e.g., “Quality Plumbing”) or too generic may be refused. To overcome this, your attorney may submit evidence of use, showing that the trademark has acquired distinctiveness through extensive use in the marketplace.

  • Prior mark objection: A trademark may be refused if it conflicts with an earlier-filed trademark. In such cases, your attorney may submit arguments to distinguish your mark over the cited mark, submit evidence of use to demonstrate prior or honest concurrent use, and/or negotiate a co-existence agreement with the owner of the cited trademark.

Responding to Examination Reports: If objections are raised, IP Australia will issue an examination report. You have a minimum of 15 months to overcome all the objections in the report, and it is often possible to resolve objections by narrowing the specification, submitting legal arguments, and/or providing evidence of trademark use.

Extension of Time: If you require more time to respond to an examination report, you can request an extension. Extensions are usually granted for up to six months, but further extensions may be possible in exceptional circumstances.

4. Acceptance and Opposition Period

If any and all objections are overcome, the trademark will be accepted for registration. However, before it is officially registered, there is a two-month opposition period during which third parties can oppose the application.

Grounds for Opposition: Third parties may oppose the registration on several grounds, including that the trademark is too similar to their own, that it is deceptive or misleading, or that it was filed in bad faith. In some cases, oppositions may also be based on prior rights, such as earlier use of an unregistered mark.

Defending Against Opposition: If your application is opposed, you may wish to file a notice of intention to defend. The opposition process can involve submitting evidence and legal arguments to IP Australia to justify why your trademark should be registered. This is often a complex and lengthy process, requiring expert assistance from a trademarks attorney.

5. Trademark Registration and Renewal

Once the opposition period has passed without any challenges, or if any opposition has been successfully resolved, your trademark will proceed to registration.

Registration Certificate: You will receive a certificate of registration, and the trademark will be protected for an initial period of 10 years from the filing date. The registered trademark gives you exclusive rights to use, license, or sell the trademark within Australia across the goods and/or services specified.

Renewal of Trademark Registration: Trademarks must be renewed every 10 years to maintain protection. IP Australia will send reminders when the renewal date approaches. It is important to ensure that your contact details are up to date to receive these reminders. Failure to renew a trademark on time can result in it lapsing, though there may be options to restore the registration within a six-month grace period.

Monitoring and Enforcement: After registration, it is essential to monitor the marketplace for potential infringements of your trademark. This may involve conducting periodic searches and taking action against unauthorised use of the trademark by third parties, either through negotiation, legal action, or alternative dispute resolution.

Where to from here?

The Australian trademark application process can be relatively straightforward for many businesses. However, it is always worth starting with a free consultation to ensure you’re on the right track (e.g., it can be crucial to ensure your trademark is free to use). Consulting a registered Australian trademarks attorney at the outset can help ensure that your trademark application is properly prepared and filed, and that any objections are addressed efficiently.

If you have any questions about the Australian trademark application process, please don’t hesitate to book a complimentary trademark consultation with us: