Trade mark application

Not all trade marks are registrable!  

• A trade mark must be able to distinguish your goods and/or services from those of other traders.  It is very difficult to file a trade mark which is:
  • Descriptive of your goods and/or services; or
  • Identical or deceptively similar to a registered trade mark with similar goods/services.
• The broadest possible protection for any mark would be to file the words in plain text.  Provided the words are registrable this will provide you with protection against any future infringer using your words or similar words for the same or similar goods/services in any format (ie in combination with another logo).

• Before adopting any new trade mark, we recommend as a first step a trade mark search.  This is optional and some clients prefer to do some of their own searching. 
• However what a lot of people underestimate is that as Australia is both a common law and a first to use country, any unregistered trade mark can develop rights which could prove a bar to registration and in some cases possible infringement issues in Australia.  
• A trade mark search will give a good indication of whether the mark is available for use and the likelihood of obtaining registration.

This is first step to securing your rights in your TRADE MARK!

• Your application should include a copy of the mark for which protection is sort and a description of the goods or services you currently use or intend to use to distinguish your mark from that of others.
• An application for a trade mark can be filed in one or more classes which are selected based on the main products and services of your business.  With all trade mark applications, the cost to file the application is largely determined by the number of classes of goods/services required.
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Once the application is filed it will be examined by the Australian Trade Mark Office.

• This is typically taking approximately four to six months from filing of the application. Expedited examination can be requested to speed up this process if required.
• Your application will be compared with other trade marks that are currently on the register. If any issues are identified with the trade mark, a report outlining the issues will be forwarded to us. Raven IP will advise you on the best ways to respond to any issues raised in the report.
• Many applications pass examination without objection, if your application meets all the requirements, your trade mark will be accepted for registration.

• Once accepted the trade mark application is advertised on IP Australia’s register, at this time a two month post-acceptance opposition period begins.
• Any third party is given two months to oppose registration of your trade mark.  However, oppositions are rare.  
• If no opposition is filed, your trade mark will be officially registered and a certificate of registration issued.  Trade mark registration lasts for ten years from its filing date and can be renewed for further periods of 10 years for a s long as you like.
• Once your trade mark is registered, you can display the ® symbol next to it whenever it is used. A registered trade mark gives you the exclusive rights to that mark, which makes it easier for you to take legal action to prevent others from using it.