Before the form
Who owns the mark
This is where the gap between a business name and a trade mark shows most clearly. The owner listed on an application needs legal personality: a person or entity with rights and duties in law that can undertake legal actions. A business name doesn’t have that. IP Australia says the trade mark is owned by the business owner or owners, not the business name, and gives the example that a business name can’t apply, but the person who owns it can. A trust and a partnership can’t apply either: the trustee or trustees own the mark, and in a partnership the individuals who make it up do.
Getting the owner right matters, IP Australia says, because any ambiguity about ownership “can be used to undermine or overturn your trade mark rights.” Two mistakes it names:
- An ABN or ACN that points to a different legal entity from the listed owner, such as an individual’s name with a company’s ABN or ACN attached.
- A typing or spelling error in the owner’s name, which can be very hard to fix once the application is in.
To apply, IP Australia says you must reside, or have an agent who resides, in Australia or New Zealand, and intend to use the mark for the goods and services in the application.
Classes
Choosing the goods and services
An application lists the goods and services the mark will be used for, and that list decides what the mark protects. There are 45 classes: 1 to 34 for goods and 35 to 45 for services. Exclusive rights cover only the goods and services listed, and once the application is submitted new ones can’t be added; adding them takes a new application.
IP Australia’s picklist is a searchable list of more than 60,000 goods and services sorted into the 45 classes, and using it lowers the fee. Fees are charged per class, so each class added costs more.
Fees
Two ways to apply, and what each costs
IP Australia offers two ways to apply: TM Headstart, a pre-application service that includes an indicative assessment before you file, and its standard application process. Each has its own fee.
| Application | Fee per class | Note |
|---|---|---|
| Standard, with picklist | $250 | The minimum for a standard application. |
| Standard, without picklist | $400 | Lower fees apply with the picklist. |
| TM Headstart | $200 + $130 | An assessment fee, then a submission fee only if you decide to apply; a minimum of $330 in all. |
| By post | $450 | Higher fees apply when the application can’t be made online. |
IP Australia’s own worked example: a standard online application using the picklist for hats in class 25 and sunglasses and sunglass cases in class 9 costs $500, two classes at $250 each. With TM Headstart, changes before finalising add to the cost. The fee isn’t refunded if a mistake means re-submitting.
The four steps
From filing to the register
- 1. ApplicationWith TM Headstart, after the pre-application you have 5 days to make changes on the examiner’s feedback and 5 days to formalise the application; miss a deadline and the application lapses. If the mark is successful, a Headstart application takes effect from the date you formalise it, and a standard application protects you from the day you filed it.
- 2. Examination, usually 3 to 4 monthsIP Australia checks the application meets the legislative requirements, and usually takes 3 to 4 months from filing, depending on the type of application and demand. If there are problems it sends a report, and in some cases the application can be fixed. A time-sensitive application can be expedited, but the minimum time from filing to registration is still seven months.
- 3. Acceptance, then two months’ noticeAn accepted mark is advertised in the Australian Official Journal of Trade Marks and on Australian Trade Mark Search for two months, and anyone can oppose it during that time.
- 4. RegistrationIf the mark isn’t opposed, or the oppositions are overcome, it is registered. Under section 72(1), subject to an exception in section 72(2) for a mark also filed in a Convention country with priority claimed, registration takes effect from the filing date. IP Australia says it provides 10 years’ protection from that date.
Opposition
If someone opposes the application
An opposition is a formal objection to the decision to accept an application, and it usually comes during the two months’ notice period. IP Australia lists the most common reasons, among them a belief that the mark is identical or very similar to another registered or pending mark, or that the applicant is not the true owner.
The opponent files a notice of opposition and a statement of grounds and particulars within the notice period. The applicant then decides whether to defend; if not, the application lapses. An applicant who defends completes a notice of intention to defend within a month of getting the notice of opposition, then gathers evidence and arguments. If the opposition succeeds, the application is rejected; if it fails, the mark is registered.
Next guideWhat the registration then gives its owner, and how it is kept alive, is in what a registered trade mark gives you. The checks to run before any of this are in searching before you choose a name.