1. Searching the mark before you apply
Before officially applying to the official trademark office for registration, we strongly suggest having a thorough search conducted.
Due to processes and treaties in place with international offices, it takes a minimum of seven months to fully register a trademark in Australia. By having a thorough search conducted first, you will know the chances of successful registration in a matter of only days.
What does Australian Trademarks do?
We will conduct a comprehensive search of the records held in the ‘trademark registry’ by the government office, and report to you on any trademarks found to be identical or deceptively similar to yours. Unlike business or company name registration, it can sometimes be difficult to register your trademark if a similar mark is already in place. Our comprehensive report will also advise you of options to overcome difficulties, if any are found. We will also advise you on matters, other than conflicting trademarks, that may cause problems or difficulty in registering your mark.
2. Filing an Official Application
Once the search is finalised, or if you choose not to have a search conducted, we can file an application with the government office on your behalf. It is at this stage, we must specify which of the 45 classes we are applying under. A fee is charged per class or category required. A class is essentially a category of goods or services. For example, if your trademark is to identify a clothing label, then only one class would be required. However, if the trademark was also the name of your shop then an additional class would be required.
At the same time as we forward our search results, which will include our suggestion as to which class or classes you should consider, we will also forward the relevant instruction form to proceed with the filing of the official application. Our office will be listed as the ‘postal address’ on your application so that all official correspondence is forwarded to our office and is attended to on your behalf.
3. Government Examination
Once filed, the government office will send a letter out within two weeks, to acknowledge the application as filed and to allocate your official trademark number. This number remains for the entire life span of your trademark.
The government office will then ‘examine’ your application. This is to ensure that it complies with the rules and regulations of trademark registration, and to ensure there are no other issues that should prevent registration. The results of this examination will mirror those provided by our office at the search stage, in nearly all cases. The examination conducted by the government office will take approximately four months, at which time they will forward either an ‘acceptance letter’, or an ‘adverse report’.
If your trademark is accepted, it means that no problems with the application or the trademark have been found. Once accepted, your trademark will be advertised in the Official Journal of Trademarks on a date specified at the time of acceptance. Once advertised, a formal ‘opposition period’ will follow. An opposition period is for three months and means that any third party can file an official objection against your trademark becoming registered.
If the government office issues an examination report, it means that a problem, of some description, has been found. If this is a minor issue, we will attend to it on your behalf and report to you accordingly. However, if it is a bigger issue, such as a similar mark has been found, or the trademark has been deemed generic, we will need further information from you, in most cases, before responding the report. If Australian Trademarks has conducted an earlier search prior to application being filed, it would be highly unlikely that anything unexpected would be found.
Once your mark has been accepted, and presuming no third party objects to your registration during the standard three month opposition period, your trademark will become registered for a period of ten years from the date of filing, once IP Australia (the government office) has receipted the final fee. The final fee may be paid before the opposition period expires. It is recommended that you pay the registration fee before the three month period is over to avoid persons being able to file a late objection. (If you choose to pay early and your application is opposed, a refund of the government fee will be given).
Once the fee is paid and all compulsory time frames have expired, you will be sent an official Certificate of Registration.
Once you have a fully registered trademark, you may begin using the trademark symbol “®” that you may have seen with other company’s brands. You may not use this symbol before your trademark is officially registered – it is an offence to do so.