You have spent countless hours working on the branding for your small business. You have meticulously selected the colour, the shape and composition of your logo. You’re about to take the next step and expand your business nation-wide. Protecting your brand should therefore be an important part of your expansion strategy. Learning how to register a trademark is highly beneficial to your small business, without it, your brand is vulnerable to misuse or worse, registration by another.

Applying for a trademark can be a time-consuming and complicated process. To save time LawPath recommends getting in touch with a trademark attorney.

What is a trademark?

Trademarks are a valuable marketing resource that promotes and protects your products and services. Any feature or combination of features that distinguishes your products or services from your competitors can be registered as a trademark. Trademarks can be a particular name, word, phrase, letter, number, shape, smell, sound, colour, image or aspect of packaging. Iconic trademarks include the Cadbury shade of purple, Toyota’s ‘Oh what a feeling” jump and McDonald’s golden arches.

Why Register as a Trademark?

If you are intending to commercially market your unique product or services you will need a trademark. Only a trademark can provide proprietary protection for your brand and prevent any unauthorised use by others in Australia. As a trademark owner you have the exclusive right to use, sell and licence your trademark. Registering your brand as a trademark is economically beneficial to your business, and will protect your brand from any misuse or registration by your competitors.

How to Register a Trademark

Step 1. Conduct a Search

Before applying you should conduct a search of the Australian Trade Mark Online Search System to see if your trademark has already been registered or if there are any similar trademarks.

Step 2. Applying

Anyone can make a trademark application, however the owner of the trademark must make the claim. The owner can be:

  • an individual;
  • a company;
  • an incorporated association; or
  • a combination of the above.

The application is online and it must include:

  • Your name and contact details;
  • A representation of the trademark;
  • A description of the applicable goods and services;
  • A list of the relevant classes; and
  • The filing application fee.

Step 3. Determining the Class

To register a trademark you will need to determine the classes of goods and services appropriate to your business. Goods and services are categorised into 45 classes (34 goods, 11 services) and the relevant classes must be precisely identified in your application. This is an important selection as you can only commercially use your trademark within the classes it is registered.

Determining the class of goods and services for your business can be a complicated process. It is important to know the appropriate classes for your business. As classes cannot be altered after the application is submitted, LawPath advises contacting a trademark attorney.

Step 4. Examination

Once your application has been made it will be examined. Your application will be accepted unless the application has not been made in accordance with the Act or there are grounds for rejection. An examination report will be sent identifying the problems or success of your application.

A trademark will be rejected if it:

  • Contains prescribed or prohibited signs;
  • Cannot be represented graphically;
  • Is not distinctive;
  • Scandalous or contrary to law;
  • Likely to deceive or cause confusion; or
  • Identical or similar to registered trademarks.

This process takes usually 3 to 4 months after filing the application. If there are no grounds for rejection your trademark will be registered. The trademark will be entered into the Australian Official Journal of Trade Marks (AOJTM) and listed under the ATMOSS.

Final Step. Registered Trademark = Protected Trademark

With a registered trademark, your brand will be protected nation-wide. Your trademark is protected for a term of 10 years and this can be renewed. If you intend to commercially expand your business internationally, you will need to make further applications. As the owner of a trademark you will have the confidence to expand your brand nationally and internationally.

LawPath has access to highly qualified IP attorneys that can help with your trademark. Contact a LawPath consultant on 1800LAWPATH to learn more about customising legal documents, obtaining a fixed-fee quote from our network of 600+ expert lawyers or any other legal needs.

Zachary Swan

Zachary is a marketing co-ordinator at LawPath assisting the content team. With a keen interest in digital media and IP law, he has completed a Bachelor of Law and Communications at the University of Wollongong.