Preliminaries
Before you begin the formal trade mark application process, you’ll want to give some serious thought to how you intend to brand your business. A trade mark attorney firm like ours may be able to line up some help for you with branding and the initial draft of a proposed trade mark. But these preliminaries are most commonly done by the client in advance.
Trade Mark Search
It’s wise to do a thorough search to see if someone else already has a similar trade mark, before you spend a lot of money on branding or paying government fees. If your proposed trade mark is too similar to another Australian trade mark, you’ll have difficulty getting your mark registered. If unsuccessful, you won’t get a refund of the government fees. Worse yet, you may inadvertently be infringing the other party’s rights, and inviting legal action.
Even if you decide not to register your brand (which may be risky), it’s still wise to check that it’s not infringing anyone else’s rights. This will give you a certain degree of confidence that using your brand won’t land you with a Letter of Demand from an attorney.
Even without a trade mark, businesses that have been trading and promoting a unique brand for a long time do have certain rights. However, it’s still a good idea to do a trade mark search and check whether there’s potential trouble on the horizon.
We include a thorough search with our fixed-fee packages, and also offer a stand-alone service. Our aim is to get you through the entire registration process without giving anyone a legitimate reason to object to your proposed trade mark.
The Application
By law, your trade mark application needs to be in the right form, correctly completed, and submitted for examination. Otherwise you’ll get an ‘Adverse Report’ (see below).
By this point, it’s important to have worked out exactly what you want as a trade mark. For example, you may want to apply for a composite logo with graphics and words. Or you may want to split those into separate marks (eg if you plan to extend your product line).
A trade mark is meant to distinguish the goods or services of different traders. That’s why you’ll also need to specify which of the dozens of ‘classes’ of goods and services your mark would apply to. This may not be a simple matter, especially if you have future ambitions to expand your business into new sectors. You’ll want to make a sufficiently broad claim. But remember – every additional class brings another government fee. Adding classes can be one of the most expensive parts of your application.
That said, you can’t add more classes to your trade mark after you’ve filed your application. If you do need to add another class later, you’ll have to pay the full fees for an entirely new trade mark application with the extra classes.
You can see why so many people decide to get professional help with their applications!
Examination by the Trade Mark Office (IP Australia)
Once you’ve filed your application, the Trade Mark Office (at IP Australia) will assign it to an examiner. The examiner will check that you’ve met the filing requirements, and decide whether your trade mark is registrable.
This process currently (2018) appears to be taking around 4 months, although timing can vary. There may be ways to expedite this phase, depending on your needs. But a trade mark will take at least 7.5 months to be registered no matter what.
Once the examiner has considered your application, IP Australia will issue an examination report.
If there are no problems with your application, it will be ‘accepted’ (see below) and published.
However, if there <e>are<e> problems, you’ll receive an ‘Adverse Report’.
Adverse Reports
If the examiner finds that your application needs clarification, or that there’s something wrong with it, you’ll be sent an Adverse Report.
These are fairly common. They’re not necessarily a big deal, if the examiner just needs more information. But if your application is seriously deficient then your trade mark may be refused.
The most frequent major objections are that a proposed trade mark doesn’t actually distinguish the brand from others, or is too close to existing marks.
If an examiner raises an objection, you’re still entitled to argue your case. This will usually require you to present a legal argument (drawing on relevant trade marks legislation and court precedents) about the facts of the matter. In some cases, it might be necessary to submit evidence that your proposed trade mark already has a meaningful reputation in the market. It may sometimes be necessary to adjust the goods or services included in your specification.
For clients using our fixed-fee application packages, we look after all Adverse Reports at no additional cost – although of course our main objective is to avoid Adverse Reports in the first case.
Acceptance (or Rejection)
You have only fifteen months to get past the examination stage. Regrettably, a lot of individuals who do their own trade mark applications simply aren’t able to overcome their Adverse Reports. Of these, some applications lapse. Others are withdrawn. Many are rejected. They don’t get a refund.
On the other hand, if IP Australia had no objections, or if you overcome the objections, then they will issue (and eventually publish) a Notice of Acceptance. In practice, this won’t happen until at least five months after you file your application.
Remember: acceptance is not the same as registration. Acceptance just signifies that the government believes your trade mark application meets the legal requirements. Then it’s time to allow members of the public to have their say.
The Opposition Period
Following the government’s acceptance and publication of your application, there’s a short period during which members of the public can oppose your mark. That’s because you’re asking the government to grant you monopoly rights to your trade mark – a pretty big deal! It’s considered only fair to give other people a chance to raise any issues they may have.
Most applications aren’t opposed. If someone does oppose your trade mark application, they have two months from the date that your acceptance was published to file a Notice of Intention to Oppose. After that, your opponent has to lodge a Statement of Grounds and Particulars explaining the concerns about your mark.
At this point, you’ll need to decide whether you wish to defend your application. An opposition can be expensive and quite time-consuming. If your trade mark is opposed, you should definitely seek professional legal advice.
If nobody opposes your mark, or if you successfully counter the opposition, your trade mark will then be registered.
While it’s still possible for an unsatisfied opponent to mount a court challenge to IP Australia’s decision, it’s not common. The costs are more than most parties can afford.
At Acorn Trade Mark Attorneys we do our best to anticipate possible objections to your brand, and work around them from the very beginning of your draft application.
Registration – The Goal Of The Trade Mark Application Process
If your application has made it through all the previous stages, IP Australia will register your trade mark. Because of Australia’s international treaty obligations, registration won’t happen until at least 7.5 months after you originally filed.
Your trade mark will be valid from your original filing date, and – so long as you use it – will be good for ten years. After that, you’ll be able to keep renewing your trade mark every ten years. You can continue renewing it for as long as you use it.