How Do I File a Trademark? (2021 Update)
A trademark is a great way to protect your intellectual property. Find out how to file a trademark here.
What is a trademark?
The Trade Marks Act 1995 (Cth) defines trademarks in section 17. Trademarks are “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person”.
In other words, trademarks are a legal way to set your business apart from rivals. Brand names, logos and slogans are key examples of regular trademarks. Even a specific shade of colour will be a trademark in certain situations! Cadbury’s iconic purple colour is a great example of this.
Who can apply for a trademark?
Anyone can apply for a trademark. You do not need a lawyer to file the applications. Use the user-friendly LawPath Trademark Registration process to register your trademark hassle-free and quickly!
What is the Process For a Trademark Registration?
Step 1: Trademark Search
Using the LawPath Trademark Registration process, we will conduct a trademark search to ensure that your chosen trademark is available. It is important to ensure that your trademark is not too similar to another Australian trademark to prevent difficulty in securing your rights, and more importantly, prevent infringement of another entity’s trademark rights.
Did you know:
A takeaway food store in Adelaide trademarked the ‘Burger King’ name. When the Burger King franchise conducted a trademark search in Australia, they found they could not use the name. As a result, Hungry Jack’s exists only in Australia as a replacement for the Burger King name! This is a clear example of the strength of a trademark.
Step 2: Filing the Application and Classes
As trademarks distinguish the goods or services of different businesses, it is important that you advise what those goods or services are when you file a trademark application.
Goods and services fall into one of 45 classes as prescribed by agreement. The majority of countries around the world have adopted this agreement. LawPath will recommend the most suitable classes you require.
When you submit your online application, our team will review your application, and advise you if your trademark is registrable within 5 days.
Our LawPath Trademark Lawyers will then prepare and file the trademark claim in the appropriate goods or service class.
The official record containing the ‘address for service’ will list LawPath, as your agent in the claim. This means that all government correspondence gets directed to us. If another party queries, contacts, or challenges your trademark, they would contact us, rather than you. This ensures that you do not have to deal with the nitty-gritty stuff. We will review, report and advise you accordingly.
Step 3: Government Examination (Report or Approval)
The trademark office will examine all details of your filed application to ensure compliance with the Trade Marks Act 1995 (Cth). This includes:
- Meeting all basic filing requirements.
- Ensuring that your trademark is registrable.
This process takes about 3 – 4 months once filed. Once the process is complete, one of two things will happen.
- We will receive an ‘adverse report’ detailing any requirements that need to be addressed.
- We will receive a ‘notice of acceptance’ stipulating that your trademark has been accepted for registration.
What happens when we receive an ‘adverse report’?
Our LawPath Trademark Lawyers will work closely with you to remedy the situation as soon as possible. We will provide advice on how best to meet the requirements identified by the examiner, and have your application registered by the registrar.
Upon remedying the application, our LawPath Trademark Lawyers will re-submit your application for you, free of charge.
What happens when we receive a ‘notice of acceptance’?
The ‘notice of acceptance’ advises when your trademark will appear in the Official Journal of Trademarks.
At the start of the advertisement of acceptance, any objecting party has 2 months from the date of advertisement to file a notice of intention to oppose the registration of your trademark. An intention to oppose must be a statement highlighting the grounds and details upon which they oppose.
Your trademark will progress to full registration where there is no intention to oppose, request for a time extension or objection lodged.
Step 4 (Final Step): Registration and Rights
Your trademark will proceed to registration upon receipt of final fees after acceptance. This is assuming there has been no opposition or you have been the successful party in an opposition to the trademark.
The earliest date a trademark can be registered is 7.5 months after an application is filed. This is to fulfil the government’s international obligations to allow 6 months for applications to claim a priority date based on an overseas filing.
Upon registration, you will be issued an Official Registration Certificate. Your trademark will be protected for 10 years, and is renewable after that period.
Find yourself needing a trademark for your business? We have you covered. LawPath has can get you registered within minutes using our easy-to-fill application. Get started today.
Daniel is a Legal Technology Intern at Lawpath. He is currently studying a Bachelor of Laws/Commerce double degree at the University of Wollongong. He is interested in corporate, commercial and sports law, with a focus on how legal technology can help produce effective outcomes.