Navigating trade mark examination in Australia: a step-by-step guide.

Registering a trade mark is a vital step for protecting your brand. However, the examination process can be daunting and there are often several hoops applicants have to jump through before a trade mark is ultimately registered.

Whilst IP Australia encourages self-filing, the trade mark application process is often not a simple one and it is well worth consulting a trade mark attorney to help guide you through the process.

This guide will walk you through the key stages of the trade mark examination process, so that you can understand what to expect and how to navigate it successfully.

Step 1: File your application

The process begins with filing your trade mark application with IP Australia. You’ll need to provide various details, including:

• the trade mark (brand name, logo, slogan, or other brand identifier);
• the goods and services in relation to which the trade mark is or will be used; and
• the applicant’s information (name, address and contact details).

Step 2: Examination

Once your application is submitted, it will undergo examination to determine whether your trade mark meets the requirements for registration. There are several grounds upon which a trade mark application may be rejected, however the most common issues that arise during examination are:

• distinctiveness – whether your trade mark is capable of distinguishing your goods and services; and
• similar prior marks – whether your trade mark is likely to be confused with existing trade marks (note: make sure to conduct a thorough search of existing trade marks before submitting your application to avoid potential conflicts!).

If your trade mark does not meet the requirements for registration, an adverse examination report will be issued, outlining the reasons for refusal. You will have 15 months to address the issues raised.

Step 3: Response to examination report

If you receive an examination report, you’ll need to address the concerns raised before your application can be accepted. This could involve:

• amending your application;
• submitting legal arguments that the grounds for refusal have been raised in error; or
• providing evidence of use of your trade mark.

Be sure to respond thoroughly and within the specified time frame to ensure that your application does not lapse.

Step 4: Acceptance

If your application successfully addresses the issues raised during examination, it will be accepted. You’ll receive an official acceptance notice, and your trade mark will then be published in the Australian Trade Marks Journal.

Step 5: Opposition period

Once published, there is a 2 month opposition period during which third parties can challenge your trade mark. If no oppositions are filed, your trade mark will proceed to registration.

Step 6: Registration

Provided there are no successful oppositions, your trade mark will be registered and you’ll receive a certificate of registration.

In Australia, trade marks are valid for 10 years and can be renewed indefinitely for further 10 year periods.

Final thoughts

Navigating the trade mark examination process in Australia can be complex, but understanding each step can make it more manageable. From the initial application to registration, being well-prepared and informed will enhance your chances of a successful outcome.

If you have any questions or need assistance, reach out to our team of trade mark experts.