How to trademark? Guide to the Australian trademark registration process

Trademark registration is the best way to stop counterfeiters

The key steps towards trademark registration include:

Pre-filing search

Filing a trademark application with IP Australia

Examination by IP Australia

Acceptance for registration

Oppositions to registration

Registration of the trademark

1. Pre-filing search

Before adopting a new trademark and applying to register it, we recommend the optional first step of a trademark search. This will give a good indication of whether the mark is available for use and the likelihood of obtaining registration.

2. Filing an application for a trademark registration with IP Australia

Your trademark application will include a copy of the trademark and a description of the goods or services you currently use or intend to use your trademark on.

3. Examination by IP Australia

Approximately three to six months after filing, your application will be examined by IP Australia, although you can seek an expedited examination.

Many applications pass examination without objection, although it is not uncommon for objections to be raised. If the Examiner raises any objections, you are given an opportunity to overcome them through argument or amendment of the application.

If your application meets all the requirements, your trademark will be accepted for registration.

You have 15 months from the date of the Examiner’s first report to overcome any objections by the Examiner and to have your application accepted. An extra six months is available upon payment of extension fees.

4. Acceptance for registration

Acceptance of trademark applications is advertised on IP Australia’s website, at which point they are open to a two-month opposition period.

5. Oppositions

Third parties are given two months to oppose registration of your trademark. Anyone who believes your trademark should not be registered may oppose its registration within two months of the advertisement date.

If your application is opposed, it is your responsibility to defend this action. The cost of defending such a challenge depends on a wide range of factors, including the interested party’s conduct.

Oppositions are not common.

6. Registration

Following the opposition period, if no opposition is filed against your application or if an opposition is unsuccessful, your trademark will be officially registered following payment of the government registration fees. Your trademark will be recorded in the Register of Trademarks and a certificate of registration issued.

Your trademark will be registered from the date you filed your application. Once registered, your trademark becomes an enforceable legal right.

How to trademark internationally?

Australian trademark registration provides protection only in Australia. To protect your trademark overseas, you will need to register it in each country of interest. It is usually advisable to register your mark in each country where you manufacture or sell products, or are licensing your trademark (or plan to do any of these things).

With solid international experience and an international network of associates, we are ideally placed to protect your trademarks internationally. See international protection for more details.