are filing their own trade mark applications, which can save costs as opposed
to using an attorney firm who can provide a full service throughout the process. However, there are areas in the application
process where professional help is a real advantage.
I am an
experienced trade marks attorney and my services are an alternative to either
going it alone or engaging a full-service trade marks attorney firm. You keep control of your application, filing
and monitoring it yourself, but you can seek my expert advice at any stage of
the process. I charge on a
fee-for-service basis, providing advice when you actually need it, avoiding the
high fees that can be associated with large firms.
A trade mark is something
that is used by a business to distinguish its goods or services from those of
other traders eg words, a name, a logo or even a shape, colour, sound or scent
– although these last ones are more difficult to register than words and logos. That means that if a mark is completely
descriptive of the goods or services or is a term of praise for the goods or
services, eg AWESOME ELECTRONICS, the trade mark can be very difficult to
register without adding more distinctive material to the mark or filing
evidence of use.
Trade marks are
effectively in a queue on the Trade Marks Register. Earlier marks have priority over later
marks. This is one reason to file for
trade mark registration sooner rather than later.
trade mark, checking whether it is available to be used (and does not infringe
another’s rights) and selecting the goods and services for which registration
is to be sought are complex issues and professional advice is recommended. Making a mistake in any of these areas can
harm the rights of the business. I can
advise on all of these issues.
Once you have decided
on the trade mark and the goods and/or services that you wish to cover, for a
business to file a trade mark application itself, you will need to register for
eServices, the Trade Marks Office’s (“TMO”) online lodgement
service. Then you can lodge your trade
mark application online and the TMO corresponds with you online via eServices. The TMO is part of IP Australia, which also
registers designs, patents and plant breeder’s rights.
The TMO provides
a lot of helpful information about filing trade marks at https://www.ipaustralia.gov.au/trade-marks. Information about eServices can be found at: https://www.ipaustralia.gov.au/eservices-registration-overview.
You can type in a word
mark or upload an image, eg a logo, onto eServices. A word mark gives wider protection because
you can use the word in a variety of fonts and styles, but an image can
sometimes be easier to register. You can
upload the image in black and white or colour, but, even if the image is in
colour, the trade mark will normally be registered in all colours. This is the widest protection because, if
someone uses a similar mark to yours for similar goods or services, it may
still infringe your registration even if their mark is in a different colour. It is possible to limit the mark to a certain
colour or colours, in an endorsement, but this will narrow the protection of
Two ways to
file a trade mark
There are two ways to
file a trade mark application:
standard application; and
compares the two types of application at: https://www.ipaustralia.gov.au/trade-marks/applying-for-a-trade-mark/how-to-apply-for-a-trade-mark.
differences between a standard and a Headstart application
The main difference between
a standard application and a Headstart application is that a Headstart
application receives a pre-assessment by a Trade Marks Examiner. You will receive a report which tells you if
the Examiner has found any other similar marks on the Trade Marks Register for
similar goods or services. These might
block your application (although there can sometimes be ways of overcoming a
citation of a prior mark).
mark revealed by the Headstart pre-assessment could also alert you to the
possibility that your proposed mark might infringe a third party’s rights. It is important to know this before you
commit to using the mark and investing heavily in it, because you could receive
a letter from the other trade mark owner requiring you to stop sales. An alternative way of finding out whether
your proposed mark is likely to infringe someone else’s rights is to have a
professional trade mark search conducted.
I can arrange for this to be done.
may also raise other problems with the application, such as whether your chosen
mark is too descriptive to be registered. It is possible to amend the
application at this stage in light of the Examiner’s comments before it is
disadvantage of a Headstart application is that you must choose your goods and
services from the “Picklist” (see below), whereas a standard application gives
you the option of using the Picklist or allowing you to use your own
description of your goods and/or services.
Headstart application costs slightly more than a standard application where the
Picklist is used (because of the pre-assessment), but is very useful for
self-filers. It can include telephone
assistance from the pre-assessment Examiner.
If you wish to use your own description for your goods and/or services
in the standard application, there is an additional cost per class. A Headstart application may also be processed
more quickly than a standard application.
and selecting your goods and/or services
The Picklist is an
electronic list of over 60,000 types of goods and services which will cover
most goods and services that businesses wish to sell. However, sometimes it is better to give a
more specific description to particular goods or services. In this case, you will need to file a
The list of
goods and services which form the Picklist is found on the page headed Trade
Marks Classification Search: http://xeno.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml. A link to this page can also be found
at the bottom of the trade mark search page: https://search.ipaustralia.gov.au/trademarks/search/quick under the link “Goods and
There are 34
classes of goods and 11 classes of services.
These classes do not necessarily group like goods or services
together. What you are interested in may
cover more than one class. TMO filing
fees depend on the number of classes that you apply for – ie the larger the
number of classes, the higher the cost.
If this cost is an issue, you may need to decide which class or classes
are the most important to your business immediately. If your application is granted, you may file
another application for additional classes at a later time.
It is possible
to search the Picklist for the goods and/or services that you are interested in. However, there may be different ways to
describe the same thing, so that, if your search shows in a nil result, try a
“Classes of Goods” and “Classes of Services” set out what are called the “class
headings”. They are a brief summary of
what is contained in each class but they will give you an indication of which
classes are likely to be of interest to you.
If you click on a particular class number from these class headings, you
will see the whole list of goods or services in that particular class.
goods and/or services to be covered in your application is not as easy as it
looks, even if you use the Picklist. For
example, “promotional marketing” in class 35 does not refer to the promotional
marketing that you do for your own goods or services. Rather, it refers to where you are providing
promotional marketing services to others, as would a marketing consultant. There is no need to include “promotional
marketing” in your application if you do not provide this service to your
own description of your goods and/or services, instead of using the Picklist,
can also be difficult and you may accidentally combine goods and/or services
from more than one class. After
discussing what your business does in detail, I can advise on the most
appropriate goods and services to be covered by your application and how they
should be described.
Regardless of what type
of application you file, your trade mark application will be examined by a
Trade Marks Examiner to see if it is registrable and meets formal
requirements. If there are no problems
with your application, the TMO will advise you that your application is
accepted, via eServices.
all trade applications are accepted straight away or at all, even if they have
gone through the Headstart process (although this reduces the risk of
rejection). If there are problems with
your application, the Examiner will send you an “Adverse Report” setting out
what the problems are. This does not
mean that the application will never be accepted but that you need to address
the Examiner’s concerns.
it is necessary to file evidence of the use that you have made of your trade
mark to show that the mark is capable of distinguishing your goods/services
from those of other traders. Sometimes
the Examiner may cite a prior registered trade mark or pending trade mark
application, and it may be possible for you to persuade the Examiner that the
other mark and/or its goods/services are sufficiently different to your mark or
take other actions to overcome the concern.
is where professional advice can be very important. The Examiner may suggest one way to fix the
problem, but a professional may suggest an alternative that better suits the
interests of your business. I have the
experience to provide this advice.
Extensions of time
You have 15 months from
the date of the Examiner’s First Report to get you application ready for
acceptance. If you have not been able to
do this by this deadline, it is possible to extend the deadline for a maximum
of a further six months, at a cost of $100 a month in TMO fees. There is no need to provide any reason for
these extension applications. Thus, you
have a total of 21 months to achieve acceptance of your application. It is essential that you comply with any TMO
deadline or your application will lapse.
may be other circumstances where you need an extension of time on specific
grounds. If this becomes necessary,
professional advice should be sought
Once an application is
accepted, it will be advertised in the Trade Marks Journal, to give anyone else
who has concerns about the application time to file a Notice of Intention to
Oppose. This person is called the opponent. The opponent should follow this Notice within
a month by a Statement of Grounds and Particulars, setting out the reasons why they
oppose your trade mark application.
one month of you being given the Statement of Grounds and Particulars via
eServices, you must file a Notice of Intention to Defend the opposition to your
application, unless you are prepared to abandon the application. Your application will lapse if you do not
file this Notice.
the opposition is successful, your application will be refused in part or
whole, although it is possible to appeal the refusal to a court. If the opposition fails, your trade mark will
be registered, unless the opponent appeals the TMO decision.
mark oppositions are complex and it is best to seek professional help. I am experienced in conducting trade mark
oppositions and can provide you with advice on the best way forward.
If your application is
accepted, there is no further TMO charge for registration of the trade
trade mark is renewable every 10 years for a TMO renewal fee that depends on
the number of classes. If you are still
using your trade mark after 10 years, it is very important to renew the
registration or your business will lose a valuable right. Thus, you must make
sure that your contact details are kept up to date on eServices.
This information sheet provides
general information only, and is not intended as legal advice specific to your
circumstances. Please seek the advice of
a trade marks professional if you have any particular questions.
Liability limited by a scheme approved under Professional Standards
© Margaret Ryan, Melbourne,