Ever wondered why no one has successfully started a competing business to any of the retail giants with a deceptively similar name to piggyback off their brand success? McDons or Hungry James? The answer: trademarks.
For any business owner, protecting the brand and intellectual property is crucial to the success of the business. One of the most effective ways to do this is by registering a trademark. A trademark is a symbol, logo, word, phrase, or design that identifies and distinguishes your goods and services from those of others in the market. In this blog post, we will provide you with a quick step-by-step guide to registering a trademark in Australia.
Step 1: Trademark Search
Conduct a trademark search before applying for a trademark is essential to ensure that no one else has already registered a similar trademark for the same goods and services you provide. It is also advisable to conduct a common law search to identify any unregistered trademarks that could pose a risk to your registration.
Step 2: Choose a Trademark
After conducting a search, you need to decide on the trademark you want to register. A trademark can be a word, a phrase, a logo, a symbol, or a combination of these elements. It is important to choose a trademark that is distinctive, not too similar to existing trademarks and is not descriptive of your goods and services. For example, “Wine Store” for a wine shop will be blocked by IP Australia for being descriptive of the goods that are being sold by that business – IP Australia will not allow one business to have a monopoly over a common word or phrase needed by other traders in that industry.
Step 3: Determine the Trademark Class
In Australia, trademarks are classified into 45 different classes, each representing different goods and services. You need to determine the class that best represents the goods and services you provide. It is important to select the correct class as it will affect the scope of your trademark protection. For example, being protected in class 14 in relation to jewellery is unhelpful if what you actually sell is clothing.
Step 4: Prepare and Submit Your Application
Once you have determined your trademark and classes, you need to prepare and submit your application. The application should include the following:
- Your trademark
- The class your trademark falls under
- Your name and contact information
- The goods and services your trademark will represent
- The date you began using your trademark in Australia, if applicable
Step 5: Wait for Examination
After submitting your application, it will be examined by the IP Australia to ensure that it meets all the requirements. The examination process can take up to several months. It is important to respond promptly to any objections or requests for information from the Trademark Office to avoid delays.
Step 6: Advertise Your Trademark
If your application passes the examination process, it will be advertised in the Australian Official Journal of Trademarks for two months. During this time, anyone who believes that your trademark is too similar to their trademark can oppose it. It is important to monitor the advertising period and be prepared to respond to any oppositions.
Step 7: Register Your Trademark
If no oppositions are made during the advertising period, your trademark will be registered. Once your trademark is registered, you will receive a certificate of registration. It is important to renew your trademark registration every 10 years to maintain your protection.
Having a registered trademark gives you control over how it is used and presented in the marketplace. It provides you with the legal right to use your trademark exclusively in connection with the goods and services it represents. By registering a trademark, you can better protect your brand identity because you have the paperwork to back it up. This means that you can use your trademark in marketing and advertising campaigns without fear of infringing on someone else’s trademark.
Registering a trademark is a vital step in protecting your brand and intellectual property in Australia. By following these seven steps and seeking expert advice, you can ensure that your trademark registration process goes smoothly. Remember, registering a trademark is an investment in your business’s future, and it requires ongoing maintenance to keep your brand protected.
Gladwin Legal are experts in trademarks, branding and IP, and have extensive experience in advising businesses. If you require assistance in registering a trademark, please contact us at or 1300 033 934.
This article was written by Supipi Amarasekera.