Trade Marks

What is a trade mark?

A trade mark is used to distinguish the goods and/or services of your business from those of other businesses. A trade mark can be almost anything, such as a letter, word, name, signature, slogan, logo, label, shape, colour, sound, scent, or any combination of these.

A registered trade mark provides you with an exclusive right to prevent others from using the same or similar trade mark. Registered trade marks can last indefinitely as long as the trade mark is used and renewed every 10 years.

What are the requirements for the registration of a trade mark?

In order for a trade mark to be registered, the trade mark must satisfy the following requirements:

It must be capable of distinguishing your goods or services from that of other traders in the same or similar business.
It must not be substantially identical or deceptively similar to an existing registered trade mark for the same or similar goods or services.
Its use to distinguish your goods or services must not deceive or cause confusion nor be contrary to law.
It must not contain or consist of a prohibited sign (e.g., official signs).
It must not contain or consist of scandalous matter.
It must be capable of graphical representation.

Further Information

Obtaining trade mark protection in Australia and overseas

Registration of a trade mark

To start the trade mark registration process, a trade mark application is filed. After filing, the trade mark application will undergo examination to determine whether the trade mark satisfies the registration requirements. Once accepted, the trade mark will be advertised and, if a third party does not oppose the trade mark, the trade mark will be registered.

Pursuing trade mark protection overseas

If you wish to pursue trade mark protection overseas, a separate trade mark application will need to be filed in each overseas country or region of interest. Alternatively, an ‘International Application’ may be filed with the World Intellectual Property Organisation nominating the overseas countries or regions in which protection is sought. Each overseas trade mark application or International Application will then be examined according to the trade mark laws and regulations of the particular Trade Mark Office in each country or region.

Australian trade mark application process

After filing an Australian trade mark application, examination will typically commence within 3-4 months. If the application does not meet all the registration requirements, a first examination report will issue from the Australian Trade Marks Office. A 15 month nominal acceptance (i.e., allowance) deadline is set from the date of the first examination report.

Following successful examination, the application will proceed to acceptance and third parties are provided with an opportunity to oppose the registration of the trade mark within 2 months of the advertisement of acceptance. If there is no opposition, the trade mark will be registered shortly thereafter.

The term of an Australian trade mark is 10 years from the filing date, renewable for subsequent 10 year terms.

The flow chart below outlines the stages in the trade mark application process in Australia.

Australian trade mark filing requirements

The Convention deadline is 6 months from the earliest claimed priority date.

The following documents and particulars are required:

Full name and address of the applicant(s);
Trade mark representation;
- If trade mark is a figurative mark, then a JPG or PNG file version;
List of claimed goods and/or services;
If claiming Convention priority, details of the priority application.

Please note:

A Power of Attorney is not required.
A certified copy of the priority application will not be required for filing.