Register a trademark

When applying to register a trademark, you need to search existing registered marks to determine whether:

• the trademark is distinctive enough to allow registration
• the trademark conflicts with any pre-existing registered marks, or applications, for the same kinds of goods or services as your product or service.

Once the application is accepted, it is advertised in the Australian Official Journal of Trade Marks, and interested parties are given the opportunity to oppose registration on certain specified grounds, for a period of 3 months. In the absence of any opposition, the mark is registered upon payment of the registration fee.

Requirements for registration

To be registrable, your trademark must meet 2 major requirements:

1. No conflict with existing trademarks

Your trademark must not conflict with pre-existing registered (or unregistered) trademarks.

You will not be able to register a trademark that is identical or deceptively similar to another trader's registered trademark if the goods and services are also similar. Having 2 similar trademarks for similar products could confuse customers and could lead to the other trader demanding that you cease use and taking legal action against you if you do not.

To help ensure that your trademark does not conflict with a registered mark, you should search the free Australian Trade Mark Online Search System for registered or pending trademarks associated with similar goods or services.

You should also do preliminary searches to help ensure that your trademark does not conflict with any similar names or marks being used by other traders, even if they are not registered as trademarks. A simple scan of the internet may reveal evidence of potential conflicts. The owners of unregistered trademarks may oppose the registration process for your mark, or in some circumstances even take legal action under the common law of 'passing off'.

2. Sufficiently distinctive

Your trademark must be sufficiently distinctive and not be just a descriptive term ordinarily applied to the goods or services, or a mark that other traders would, in the ordinary course of trade, need to use.

Distinctiveness can be inherent or acquired. Inherent distinctiveness is the natural and unique appearance of your trademark. Distinctiveness of a trademark can also be acquired through use in the market place; for example, if you have used the trademark extensively prior to filing for registration, your trademark may already distinguish the designated goods or services as being those of your business. If you can establish this, your trademark will be seen as sufficiently distinctive and registration will be granted.

Trademarks that are sufficiently distinctive and unlikely to be used by other traders include:

• invented or 'concocted' words such as 'Kodak'. Note that simply putting 2 known words together to form a new word does not necessarily constitute an 'invented' word. For example, 'goodbuy' would not be considered an invented word
• suggestive or emotive words such as 'Lucky strike' for matches
• words that are not descriptive of the goods and services, such as 'Picnic' for clothing.

Registration costs

The fee structure for registering a trademark mostly depends on the number of classes under which your goods or services are categorised. Most of the fees will be a multiple of the number of classes.

There are a number of other fees that apply to other actions that may be required in relation to your trademark application. Visit IP Australia for a full list of these fees and the methods of payment.

Legal fees for advising on trademark issues, preparing applications and progressing a trademark application to registration are additional to any fees payable to IP Australia and should be considered before seeking advice.

IP Australia offers an online service that can help you determine the suitability of your proposed trademark for registration. Called TM Headstart, and available through IP Australia's online services, it can help you to identify any barriers that could prevent you from registering your proposed trademark.

Trademark classes

Each trademark is registered in relation to a range of goods and services. The Trade Marks Act 1995 (Cwlth), following the Nice international classification system, defines 34 classes of goods and 11 classes of services. A full list of classes can be found on the IP Australia website.

You need to decide under which class(es) you wish to protect your trademark. This requires identifying all goods and services in relation to which the mark will be used, and matching them to the defined classes. It is then necessary to prepare a specification describing your particular subset of goods and services within the class. It is not acceptable to simply specify 'All (goods/services) in this class'.

There are particular conventions for describing goods and services. Assistance can be found through the use of the classification search facility on the IP Australia website, or by obtaining trademark attorney advice.

A registered trademark only provides protection against use of that mark by others in relation to the goods and services covered by the registration or similar goods and services.

Some words or phrases cannot be trademarked

There are a number of words or phrases that would be difficult to trademark. These include the types of marks that other traders are very likely to use. Used alone, these words or phrases would be difficult to register as trademarks:

• descriptive words or phrases that denote the kind, quality, intended purpose or value of the goods or services (e.g. the phrase 'the best apples')
• generic terms such as 'classic' that other businesses need to use
• short combinations of numbers or letters, such as L-55 or FS, as these types of marks may be used by other traders as serial numbers or initials. Common acronyms or abbreviations such as 'LED' would also be difficult to register
• common surnames or geographic locations. While it is very difficult to register a geographic name or a common surname, someone who has used one extensively for a considerable period of time in promoting particular goods or services may be able to achieve registration via acquired distinctiveness (e.g. Smith's Crisps).

Some words are protected by law and cannot be registered as trademarks. Some are prohibited as trademarks under the Trade Marks Act 1995 (Cwlth) (e.g. 'Olympic Champion'). The use of certain words can be affected by other legislation, such as the Australian Grape and Wine Authority Act 2013 (Cwlth), under which it is an offence to sell, import or export wine with a misleading description.

Where the words on their own are difficult to register as a trademark, registration can often be achieved by combining these words with distinctive words or symbols to make what is known as a 'composite mark'. For example, a company called 'Brisbane Automotive Mechanics' would have trouble registering its business name as a trademark, as it only consists of descriptive and geographic terms. However, by accompanying the phrase with a unique feature, such as a cartoon animal, the trademark as a whole becomes much more inherently distinctive, and, as it is unlikely that another trader would legitimately need to use that phrase in conjunction with the particular cartoon animal chosen, the trademark becomes much easier to register. However, an ordinary photograph of a car engine would not have the same degree of distinctiveness.

It's important to note that registration of a composite mark only protects the combination as a whole. In the example above, the registered mark could not be used to stop another trader from using a name similar to 'Brisbane Automotive Mechanics' if the trader uses it without the cartoon.

Also consider...

• Visit IP Australia for information on trademarks and other services to assist with trademark applications. Topics include: about trademarks; the application process; search for a trademark; request a TM Headstart; apply for a trademark; renew your trademark; pay your trademark registration fee; payments for existing TM Headstart applications; and opposition to registration.
• Visit the Institute of Patent and Trade Mark Attorneys of Australia – a representative body for Australian patent and trademark attorneys. This site provides the latest news and resource information about patent and trademark law in Australia.