The Trade Mark Process

A trade mark gives you exclusive rights to a name, phrasing, logo, colour or even a smell. This means you can take legal action to prevent others from using it. Check out the process of registering a trade mark below.

Please note, this is general information only. You should always refer to IP Australia as your primary source in understanding the trade mark process.

You apply for a trade mark

 

You can apply online with IP Australia or through an IP Attorney. IP Australia also has a variety of tools such as TM Headstart and Trade Mark Assist that can aid in the process.

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IP Australia examines your trade mark

 

IP Australia checks your trade mark to ensure it is in compliance with trade mark legislation. They may also note the similarity of your trade mark to existing trade marks.

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If your trade mark gets 'accepted'

 

Acceptance means the mark is sufficiently unique but acceptance does not mean you own it yet. Sometimes if your trade mark is similar to another, IP Australia still accept it but send both parties a letter to advise of the similarity.

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Your trade mark goes into the 'opposition phase'

 

During the opposition phase any third party can attack your IP rights and claim that they rightfully own your mark. This is called an opposition. 

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Possible: You encounter an 'opposition'

 

If you encounter an opposition, you need to collect and produce evidence to substantiate that you own the trade mark. 

 

There are several outcomes to an opposition:

 

  • You withdraw, relinquishing your right to your

    trade mark

  • You fight the dispute and are unsuccessful, losing the right to your

    trade mark

  • You fight and are successful, maintaining the right to your trade mark

  • Your opponent withdraws, allowing you to use the trade mark

  • You and your opponent come to a commercial decision around use, licencing or royalties, which can have a long term effect on your profits

 

The preparation of this and the process of submitting it is complex and often requires expensive legal representation.

 

This is where Trade Mark Protect: Opposition Cover can provide cover for legal expenses in defending oppositions.

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Your trade mark becomes 'registered'

 

If your trade mark makes it through the opposition phase, it is then registered with IP Australia. This means you now hold exclusive rights to that mark.

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Your trade mark renews every ten years

 

Even though you own the mark, you have to be commercially using the mark in order to maintain the rights to use it. Though, even if you are, you may still encounter a dispute over ownership, these types of disputes are called Application for Removal.

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Possible: You encounter an 'application for removal'

 

Similar to the opposition above, the application for removal can also result in you losing the rights to your trade mark completely or settling for a commercial agreement that affects your business profits.

 

Trade Mark Protect: Registered Trade Mark Cover can provide cover for your legal expenses in defending your trade mark from removal and non-use actions.