1. What can be registered in Australia?

You can register almost anything as a trademark in Australia: words, logos, 3D trademarks, sounds, names, business names, colors, etc. However, note that you will have to prove that a regular client will be capable of distinguishing your product with a non-traditional trademark on it from products of your competitors.

1.1 Trademark Classification in Australia

A mark must be associated with products and/or services. For example, Coca-Cola is for beverages.  These products/services are divided into 45 classes, in instance, beverages fall into class 32.

The names of the products and services are determined either by the Trademark Office of Australia (IP Australia) or by the WIPO (World Intellectual Property Organization). The main list of acceptable terms is the Nice classification, but each country might have its variations. 

In Australia, custom (non-standard) items are allowed, but there will be an extra fee of 150 AUD per class. We will help you to choose standard items that will be accepted by the IP Australia. This means that you can use something like "beverages made from algae seaweed" when describing your product. It might be advised in some cases.

If you already have a trademark anywhere, you can send us the details and we might be able to use the same list of goods. In any case, we will check if the products are acceptable and help you create a description according to the local standards.

1.2 Registrable and unregistrable marks

Some trademarks can't be registered. In short, those are descriptive, misleading, offensive, or generic marks (this is not the full list). 

• Descriptive marks describe your products or services; 
• Generic are the names of your product;
• Misleading lie to customers about some features of a product;
• Offensive or disparaging marks are insulting;

etc.

 Some cases are not straightforward and it's hard to determine if a mark is descriptive right away.

1.3 Weak and Strong Trademarks

Some marks are weaker than others, even if the marks can be registered. There are suggestive marks like Microsoft, dictionary words with no direct association with the products or services such as Apple and made-up words or fanciful marks, i.e. Xerox.

The strongest marks are fanciful or made-up words, but from the marketing point of view, a suggestive mark might be preferable. A suggestive mark is a mark that SUGGEST a quality of the product. Microsoft is a suggestive mark, you understand that it has something to do with software and this makes it easier for a regular customer to remember the mark. 

A weak mark can become strong if it is used for a long period of time and consumers recognize it as a trademark. This is called to acquire distinctiveness. If you check the image below you will see that logo marks are usually more distinctive than regular wordmarks. If the wordmark is weak, the only solution is to add a logo to the mark to make it more distinctive.  

1.4 Similarity in Australia

If there are similar marks in Australia your mark might be refused or might receive an opposition. Similar doesn't mean identical. They can sound similar, mean similar things or look similar. There is no 100% algorithm to determine similar marks, each case is different and we rely on the experience of our attorneys.

It’s not only important to determine if the marks are similar but also if the products/services are similar or competitive.

Example of similar marks: KORICA for canned soup will be similar to CARIKA for beverages. Those products are sold at the same stores and the marks sounds confusingly similar.

KORICA for canned soup and CARIKA for drones are not confusingly similar as the products are completely different. 

1.5 Trademark Study in Australia

Our Study helps to determine the probability of registration of your brand. There might be similar marks you are not aware of and by completing the Study we can give our estimated probability of successful registration. There are a lot of rules regarding what marks can and can't be registered and our attorneys will make sure that your mark does not contradict those rules.

When our attorney completes a Trademark Study or an Extensive Study, you will get a list of similar marks with a similarity score. We will provide you with our recommendations if it is recommended to proceed with the trademark and how you can increase the probability or registration.

If you want to have peace of mind that your brand will be registered within this timeframe and you won't have to pay extra for solving any problems you might order our trademark study.

2. Search our Australia Trademark Database

Available online, you can request a free trademark search online using the form at the top of this page. Our intellectual property consultants will deliver a free trade mark availability report within 24 hours.

The trade mark database is frequently updated, and you can rely on the information you get from the website. However, we recommend ordering a trademark study as this will allow you to check the probability of registration of your trademark in Australia, calculated by an experienced professional.

We may spot that your mark is descriptive or generic and inform you beforehand. Some marks can't be registered in Australia and we will notify you if this is the case. 

We send search results within a day and we might contact you even earlier to ask about your business niche and your products. You will get a list of identical marks and can request additional details. That's free as well. Sometimes we can get additional details of a trademark only from a special paid database. In this case, we will inform you beforehand. 

3. Trademark Registration in Australia

3.1 Your Registration Plan

Step 1. Start with a Free TM Search. We will check if there are any obvious conflicts. You will know if it's worth moving forward with the mark.

Step 2. Learning more about your brand. To file a trademark, we will need to know the owner address and name, the trademark and if it has a logo and what services/products it covers. 

Optional Step 3. Attorney's opinion (a.k.a. Study) In some cases we may recommend asking our attorney to review the case and prepare a detailed registration report. That's an optional non-obligatory service.

Step 4. Request registration and submit your payment. The process is completely online and we'll request your mark within 3-5 days and you will get a filing confirmation.

3.2 Australia Trademark Application Cost

The final fee to register a trademark is no longer required.

• Trade mark Search in one class: 79 USD
• Additional class: 59 USD
• Trade mark Registration Request in one class: 379 USD
• Additional class: 369 USD

Our fees include everything to register a trademark in Australia from start to finish, provided that you use the standard products/services from the picklist we provide you with.

3.3 Expedited examination in Australia

An expedited examination can be requested if the processing time is likely to cause serious disadvantage to the applicant. Applications filed claiming convention priority will generally have their examination automatically expedited.

3.4 Brand Registration Process in Australia

Our intellectual property attorney will file your trademark within 5 business days, after receiving the required details.

• Applying for your mark (we pay all the government fees and submit the application) - > 
• Formal examination (if the list of goods/services is correct, if other details are correct) -> 
• Substantial examination (if the mark is unique and registrable) ->
• Publication (allowing the public and other business to object against the mark registration) - > 
• Registration 

The entire process in Australia takes 7-9 months provided that there are no problems during the examination and publication stages. That's the average time required to register your mark. 

3.4.1 Opposition period in Australia

The opposition period is 2 months. During this period anyone can submit arguments why a mark should not be registered. When a mark enters the opposition period, this information is published online in the Australian Official Journal of Trademarks. 

4. Australia Trademark Registration Requirements

4.1 Details required

Complete the form with the following details:

• Type of the applicant: individual or a company.
• Complete name of the owner.
• Full address of the owner.
• Phone number - to contact you in case if any action is required.
• Mailing address - to forward you the certificate once the trademark is registered.
• List of goods/services.
• Class or classes.
• Trademark itself.

4.2 Documents required for filing a mark

In Australia we will require no additional documents to file a mark. The process can be completed online, you can just provide us with the documents required.

4.3 Priority documents

If you file a trademark in any other country you can request priority in Australia within 6 months from the original filing date, provided that the original mark is the first application for your mark. 

The main misconception is that you can request priority based on the subsequent applications, while only the original one can be used.

A scan of your original application will be required.

5. Other application process details

You will get expedited processing and examination free of charge if you file your application with claiming priority.

5.1 Australia first to use or first to file?

Bonamark will prepare and file your trademark for registration in Australia. Australia is a "first to use" country. It means that if a trademark is in use in Australia it receives some level of protection. At the same time, only registered trademarks can use the registered symbol and enjoy the full protection.

Enforcing a registered trademark in Australia is easier than enforcing an unregistered "common law" trademark, as the business owner does not have to prove the prior use of the mark.

6. What are the benefits of owning a trademark?

6.1 What means to own a mark

You have an ownership confirmation and the mark becomes a point of value collection, meaning that whatever you invest into your brand or into its reputation will not disappear, but will ""stick"" to your trademark. Getting a registration will seal your ownership over this value. 

That's similar to buying a land lot to build a house. Would you like to build a house on a land lot that's not even yours? Of course not. Ownership matters.

6.2 What can you do with a registered mark?

When you register your trademark in Australia, you’ll be able to:

1. Take legal action against anyone who uses your brand without your permission, including counterfeiters

2. Put the ® symbol next to your brand - to show that it’s yours and warn others against using it

3. Sell and license your brand

4. Register it on Amazon

7. Why Bonamark?

Bonamark takes care of more parts of the process than any other company out there. We are not here to just file anything without thinking. 

 We are here to check everything, prepare the documents required in a way to avoid the most common objections, enhance your product list for the optimal scope of protection and make sure that you don't have to pay extra and spend more time than you have to.

In Australia, we have filed thousands marks since 2016 and work with the most experienced attorneys in this country. We take full responsibility for your success and make sure that everything is done according to your instructions.

Bonamark is one of the most valued trademark registration companies with 4.9/5 rating.

8. After TM registration

8.1 Trademark Certificate

A trademark is registered for 10 years from the date of application and a digital certificate is issued. An example is attached below

A mark filed on 21 April 2021 and registered on 21 November 2021 will be protected until 21 April 2031. 

8.2 Use of ® and TM, SM

Once your mark is registered, you can use the ® symbol after your trademark. If your mark is not registered, you may use a TM sign to claim common law rights. 

They are more difficult to enforce, but this will grant you some protection.

8.3 Trademark Validity in Australia

If a trademark has not been used within 3 years, the registration is vulnerable to cancellation upon request of a third party. An application for cancellation due to non-use over a 3-year period cannot be filed until at least 5 years after the filing date of the trademark.

8.4 Competitors and similar marks

The Australia IP Office might refuse any marks considered confusingly similar, but we recommend that you take a proactive approach to protecting your IP and order a Trademark Watch to track any conflicting marks without relying on the Office. 

This way you will be able to spot any similar marks and submit an opposition during their publication stage in order to prevent those marks from registering. 

8.5 How to maintain your mark after registration?

1.You have an obligation to use the mark in commerce. If you stop using the mark for 3-5 consecutive years your mark might be cancelled by anyone who starts the cancellation process 

2. You must keep your details up to date, if the name of your company was changed you should submit the change at the Trademark Office, the same applies to the address. Otherwise, there might be difficulties when you have to enforce your mark and if you decide to sell it. 

3. We offer Change of Address and Change of Name services and will help you to keep your details up to date.

4. Keep your trademark certificate safe. You don’t want to lose it.

8.6 Trademark renewal

Once registered your mark will be valid for 10 years and can be renewed for periods of 10 years. You are allowed to use ® with your mark to show others that it is registered. Bonamark can renew your mark in the country. You can find more details regarding the renewal here:

8.7 Can USA attorneys renew trademarks in Australia?

Answer: A USA attorney can't be a representative of a trademark in Australia if he or she doesn't have a mailing address in Australia or New Zealand. However, technically it is possible to pay the renewal fee as long as there is a recorded local representative for the mark.

Our IP Services in Australia

We offer the following services in Australia:

• Trademark Search
• Trademark Registration
• Trademark renewal
• Trademark opposition
• Defense in case of oppositions or objections/office actions in Australia
• Trademark cancellations
• Trademark assignment
• Change of name/Change of Address

If you are interested in any of these services, please do not hesitate to contact us. Note, that the final registration fees in Australia are included in the price of a registration request. The prices do not include any legal defenses in case of oppositions or objections.

Official Trademark & Patent Office in Australia

• Name of Office: IP Agency of the Australian Government.
• Address: Ground Floor, Discovery House, 47 Bowes Street Phillip ACT 2606
• Phone number: +61 2 6283 2999

The Trademark Office applies the current version of the Nice Classification