What is the Trade Mark Application Process in Australia?

Applying for a trade mark is not as simple as clicking a button. The process behind a trade mark application requires completing a series of stages. In this post, we outline the trade mark application process in Australia.

Stage 1: Preparation

The first stage is preparation. Like many things good planning and preparation is critical to success.

Before lodging your application, it‘s important to consider a number of factors. These might include:

• considering your overall branding and marketing strategy
• identifying your trade mark - is it a logo, a phrase, a word, or a combination?
• identifying the goods or services for which you use, or intend to use, the trade mark
• searching the trade marks register (and elsewhere) to make sure your trade mark is not already being used by someone else
• obtaining advice on whether your trade mark meets the statutory requirements for registration
• whether you need to apply for protection only in Australia, or in overseas territories.

Engaging a professional adviser at this stage is a good idea, because they can spot potential risks or pitfalls before you commit to an application. Good professional advice and planning can avoid mistakes and save time, money and frustration - not to mention the risk of infringement of another trade mark.

Stage 2: Lodgement

Once the application is prepared, it is lodged with IP Australia and the application fee is paid. The preferred method is to file online using IP Australia‘s eServices platform, although it is still possible (at additional cost) to file via a paper method.

Within 1-2 working days, the application will be entered and published on the IP Australia trade marks database.

Changes to the application that increase the scope of coverage or the representation of the trade mark are not permitted beyond this point.

Stage 3: Examination

An examiner will assess the trade mark application to ensure that it meets the statutory requirements for registration. This includes consideration of whether the application:

• meets the necessary level of distinctiveness for registration (ie the trade mark is capable of standing out in the market from signs other traders might need to use)
• is not similar to an existing registered or pending trade mark
• satisfies other legislative requirements, such as correct identification of the applicant

Typically, the examination process takes up to 4 months from the application date. However, it is possible to request an expedited examination if there are valid reasons. Expedited examinations are usually completed within 2 months after the application date.

Examination Report

If there are issues with the application, the examiner raises an Examination Report. This will set out the reasons why the trade mark application cannot be accepted for registration.

Depending on the issues in the Examination Report, the Applicant may attempt to resolve these by:

• making submissions (legal arguments)
• filing evidence of use to show how their trade mark has been used
• making allowable changes to the scope of their trade mark (such as removing items or changing their classification)

The Applicant has a period of 15 months from the date of the Examination Report to respond and resolve the issues raised. If the issues cannot be resolved, the trade mark application will lapse.

At this stage, it is strongly recommended that you obtain professional assistance. The rules relating to acceptance can be technical and there are specific requirements for what the evidence and submissions must address and how they are presented.

Acceptance

If the examiner considers that the application meets the requirements, they will issue a Notice of Acceptance. The application can then move on to the next stage.

Revocation of Acceptance

In rare cases, an Acceptance may be revoked. Examples where a revocation of acceptance might occur include an error or omission of the examiner, filing of a trade mark that has a superior priority to the application, or changes to the law or policy which would prevent registration of the trade mark.

Stage 4: Advertising and Opposition Period

After the application has been accepted, it must be published in IP Australia‘s Official Journal for a period of 2 months.

The earliest that an application can be advertised is 4½ months after the application date.

Oppositions

During this period, third parties are able to formally oppose registration of the trade mark application.

Anyone can file an Opposition, but they must have grounds to do so. One of the common reasons a trade mark application is opposed include that the trade mark is alleged to be similar to an existing trade mark.

If an Opposition is lodged, the application cannot proceed to registration until the Opposition is successfully resolved, or abandoned by the Opponent.

Oppositions are complex and have strict deadlines and formal requirements. If your trade mark is opposed, it is strongly recommended that you seek professional advice.

Stage 5: Registration and Renewal

When the Opposition Period is completed (or after any Oppositions are resolved), the application can be granted registration.

Registration confirms that the trade mark is protected, but this protection is taken to commence on the date the application was first lodged.

The earliest that an application can be registered is 6½ months after the application date.

Non-Use Removal

After a trade mark has been registered for a certain number of years, it can be vulnerable to a non-use removal action.

Anyone can file a non-use removal action. If an action is filed, the trade mark owner will be required to prove it has made sufficient use of the trade mark. If the trade mark owner cannot prove such use, the trade mark may be removed from the Trade Marks Register.

For more information about Non-Use Removal Actions, please read our post here.

Renewal

Renewal of the trade mark will be due on each 10 year anniversary of the application date.

In order to maintain the trade mark protection, trade mark must be renewed on time or within an allowed grace period. If the trade mark is not renewed, it will expire and be removed from the Trade Marks Register. Once a trade mark has been removed, it is no longer protected and can no longer be enforced under the Trade Marks Act.

More Information

Mirai Legal provides advice and assistance for all stages of the trade mark application process. If you are considering a trade mark application, or have encountered a hurdle in the process, contact us to see how we can help.