Trademark Registration Australia
Onyx Legal is here to safeguard your business. Our team of experienced lawyers are trademark specialists and provide honest, straightforward and affordable legal support. See how we can help you.
What are trademarks?
Trade marks (or trademarks) can be valuable to your business.
Whether you use words or a logo, a trademark can help people find your business or services based on your brand.
Why should I register a trademark?
You know it’s worth applying for registration of your trademark if people look for you based on that mark. For example, someone who searches in Google for ‘digital marketer Brisbane’ is not looking for a brand. They are looking for a service and don’t really know who they want to provide that service.
On the other hand, if someone searched ‘splice medical marketing’, we know they are searching for Splice Marketing Medical Marketing Agency. [Disclosure: We share office space with Splice. Lovely people!]. ‘Splice’ is the distinctive part and the part that could be used to apply for registration.
Is it possible to register my chosen trademark?
Not every word or phrase can be registered as a trade mark.
Process for your trademark application
The simplest process is application, acceptance, advertising then registration. It does get complicated if there is an adverse report or an objection.
An adverse report is raised if the trade mark has a problem with your application. An objection is where a competitor claims your application should be denied.
If an adverse report or objection is raised, you must choose whether to respond or abandon your application. There will be additional fees and longer timeframes involved in pursuing your application if that happens.
Australian trademark registration timeline
The time frames involved in the trademark application process are not short. Trademarks generally take 6-12 months for registration to be finalised, sometimes longer. If accepted, the date of registration will be your original application date. Registration stays in place for 10 years.
Your trademark application will go through a process of examination and will either be accepted early, or we will receive an adverse report.
If accepted early, your trademark is advertised with a 3-month window for people to lodge an objection. If no objections are received by IP Australia in that time, your trademark application will proceed to acceptance and we will receive notice of registration.
When ad adverse report is received, we need to resolve IP Australia’s concerns before your mark can proceed to be advertised. We have 15 months to resolve those concerns before your application lapses.
You can withdraw an application at any time.
Applying to register an image trademark
If you wish to apply to register an image, only the image will be protected, not necessarily the words contained in that image. Where the words are an integral part of the logo (eg. Amazon) the words may also gain some protection, but there are no guarantees.
If you want to register a logo and it is an image, you will need to include an image that meets these requirements:
- PNG is the preferred file type for all Trade Mark images
- MPS (.mp3) or MPEG (.mpg) will also be accepted
- The preferred size range for trade mark images is 4 cm x 3 cm (minimum) and 8 cm x 8 cm (maximum)
- The minimum allowable image size is 4 cm x 2 cm to ensure the features of the trade mark can be clearly identified
- The maximum allowable size for an image is 29.7 cm x 21 cm
- The colour space of an image but be RGB.
If you wish to apply for a coloured mark in addition to black and white, additional fees will apply. You can register a coloured mark without having to apply for protection in the colours. The main thing is the apply for the mark in the form you intend to use.
Classes for registration
There are 45 different Classes for trade mark registration covering different products and services. Your registration will only apply to the classes you apply for.
Trade marks are generally registered in 1 – 4 classes for each mark depending on the type of product or service being registered.
Our first step will be assisting you in identifying appropriate classes and appropriate descriptions for your products or services, and checking already registered marks to avoid conflict.
Even though we believe that descriptions are appropriate, that does NOT mean IP Australia will agree. If they do not agree, we receive an adverse report. Sometimes it is as simple as adjusting descriptions slightly to meet IP Australian expectations and then your mark can proceed to registration.
IP Australia registration fees will be between $250 – $400 per class for each mark depending on whether you use pre-set product descriptions or use your own unique descriptions.
So if you applied for registration of your logo in two classes using IP Australia pre-set descriptors, your IP Australia fees would be 2 x $250 = $500.
Our fees for preparing, filing and managing the trade mark application process are broken down into three main steps:
This is conducting an availability search for your proposed trade mark, determining the most appropriate classes for your mark and the descriptors for your products or services. This covers up to two marks in similar classes where applications are to be made at the same time.
After we confirm you are happy with the class selection and descriptors, we file your application and monitor progress, keeping you updated when we hear from IP Australia.
Adverse Report or Objection
If we receive an adverse report or objection, we will let you know the next steps and additional costs involved.
Let you know when registration has been confirmed and send you your certificate of registration and finalise our file. This will be 9 – 12 months after your original application was filed
If you’d like to apply to register a mark, we will let you know our fees, and your total costs for Steps 1 and 2 before we take any action. Contact us now.
Overseas Registration of Trademarks
Trade mark protection is limited by country. If you want protection in another country, you can apply for it in that country, or use an Australian registration as a basis for applying in that other country pursuant to the Madrid protocol within limited timeframes.
Whether you need it in another country depends on where your customers and competitors are located. Each country has a different system. For example, in the US, you need to be able to show actual commercial use of your mark before applying for registration, which you do not need in Australia. If you’d like to register in another country, please let us know and we can advise further.
To get started, we will need from you:
- your trade marks
- any image you wish to register
- a description of the products or services you wish to have covered by the mark, which can include products and services you expect to develop during the next three years.
Why Work With Us?
our passion to help others grow is at the core of Onyx Legal
Each member of our team have been involved in running their own business. We know what its like to finish the bookkeeping at night, to try and identify that point where you need a new team member but not sure if you can afford them, and to manage clients with Ferrari expectations and Hyundai budgets.
You need our support, rather than letting your legal issues distract you from your core business. We aim to create legal documents that you understand, and your clients or partners understand, without needing further legal interpretation every time you start a new contract.
Let us help you keep your legal agreements and advice simple, straightforward and something that fits your business.