🇦🇺 Choose a wordmark as your first mark in Australia. For two main reasons: it will give the broadest scope of protection as you can use it as a part of any logo or image and business names rarely change. Coca-Cola changed its logo 15 times in the last 50 years while the wordmark Coca-Cola remained unchanged since they started in 1888.
A logo as a first mark is recommended if the mark you are trying to register is considered weak (descriptive, for example, please refer to 1.3 Weak and Strong Trademarks).
A combined mark is a solid choice in many countries. There are just a few downsides, you must use it as registered at least in some cases and the scope of protection is more narrow. It means that somehow similar marks might be able to be registered.
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 trademark system, 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 trademarks 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 in Australia. 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.
Here are the four essential steps to follow to identify evasively related marks using our search study:
1. Search for identical trademarks
We offer this step at no cost. All you have to do is request your search online. On the successful receipt of your request, we check our database for identical marks that can invalidate your already registered mark or block your ongoing trademark registration. IP Australia Trademark Database Search is one of the various resources you can explore, and the database belongs to the Trademark Office of Australia.
Likewise, it is crucial to identify which class your products belong to; for instance, as an apple seller, an identical mark in class 6 for mobile phones will most likely not raise any flag with your mark for apples.
2. Verify if you can register your trademark
You can't register some types of trademarks, e.g., descriptive marks. Your brand will not register if it describes your product, qualities, or components. Other unacceptable trademarks include names of cities and countries and geographical locations.
Based on the level of description they carry, trademarks can be classified as follows:
- Generic Marks: There is only a 20% chance that marks that fall under this category will be successfully registered. Generic marks include names of products or services, e.g., car for cars; food for food; and bank for banks.
- Descriptive marks: With a 40% chance of getting registered, it is safe to say descriptive marks cannot be registered successfully. According to the name, descriptive marks describe products or services, quality, or ingredients. An example of a descriptive mark is "Green Apple" for apples.
- Suggestive Marks: They hold a 60% chance of registration and include marks that make it easy for people to guess what the product or service is all about or the qualities it possesses. An example is "Microsoft" or "Android."
- Dictionary Words: Dictionary words have an 80% chance of registration and comprise terms used for unrelated products. For instance, "Windows" for software or "Apple" for phones.
- Coined Words: These are the strongest type of marks and have a 100% chance of being registered if there are no similar marks. These marks are usually invented words and logos, e.g., Coca-Cola, Samsung, and Toyota.
3. Check for Similar marks
As said earlier, similar marks cannot stand once used previously on related products or services. However, it is possible and acceptable that a proposed trademark be similar conceptually, phonetically, and visually to an already-registered brand. While a phonetically similar mark sounds similar to another trademark, e.g., SAMSUNG and SANSUNG, a visually similar mark appears matching to another trademark, e.g., PUMA and RUMA. However, a conceptually confusing mark is quite unusual. An instance is where a usual consumer doesn't get confused about seeing two similar marks in the same marketplace – like McLeod's and McDonald's in the fast food marketplace.
4. Calculating Registration Probability
This step involves determining how realistic the registration of a mark is. Will the proposed mark still exist alongside a similar but already-registered mark? Our attorney will respond to all of the questions.
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.
One of the most important things to ascertain before filing a trademark is the availability of the trademark in Australia. It is impossible to have products or services bearing similar trademarks to related products or services.
If your trademark is already taken in Australia, you will be forced to change your trademark.
However, we can save you all the stress and future problems by trusting us with the search. With our free search, we ensure the uniqueness of your trademark by searching it through the Trademark Database of Australia while looking out for identical or very similar marks. If there is a match, in the end, there might be issues with such a trademark. However, if the registration is still in progress, you can substitute the mark for a more unique and original alternative.
You get more with our paid search, which is more detailed and thorough in its inquiry. It can detect the slightest conflicts for queries run through it, for instance, trademarks similar in appearance or sound.
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
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.
9. FAQ Australia Trademark Law
Q: 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 trademark renewal fee as long as there is a recorded local representative for the mark. An attorney in the USA can't legally practice in Australia, but they can work with an Australian attorney to renew the trademark registration.
Q: Is a US trademark valid in Australia?
A trademark registered in the United States is not automatically valid in Australia. The United States and Australia have separate trademark registration systems, and a trademark registered in one country does not automatically give protection in the other.
If you want to protect your trademark in Australia, you will need to file a separate application with the Australian Trade Marks Office.
Q: How long does it take to get a trademark in Australia?
A: The time it takes to register a trademark in Australia can vary depending on a number of factors, such as the complexity of the application and the workload of the Australian Trade Marks Office (IP Australia). Typically, the process can take 7-10 months from the time of filing to the registration of the trademark. However, it is important to note that these timelines are approximate and can be affected by various factors.
Q: Do you have to have an address of service to apply for Australia trademark?
A: If you have no attorney when applying for a trademark in Australia, you are required to provide an address for service in Australia or New Zealand. This address is used by the Australian Trade Marks Office (IP Australia) to communicate with you regarding your application and any other matters related to your trademark registration. A
Q: Do European trademarks cover Australia?
A: No, a trademark registered in the European Union (EU) is not automatically valid in Australia. If you want to protect your trademark in Australia, you will need to file a separate application with the Australian Trade Marks Office (IP Australia).
Q: How long does a trademark last in Australia?
A: A trademark registration in Australia is valid for 10 years from the date of application. After that, it must be renewed every 10 years for an additional fee.
Q: How to search if trademark exists in Australia
A: There are several ways to search for existing trademarks in Australia: 1) Australian Trade Marks Online Search System (ATMOSS), 2) Australian Official Journal of Trade Marks, 3) Hire a trademark attorney. It's important to conduct a search of existing trademarks before filing an application to ensure that your trademark is not similar to an existing one and to make an informed decision.
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.
🇦🇺 10. Trademark renewal in Australia
☑️ Read more about 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 below.
An Australian trademark is valid for 10 years from the date of application. The owner of the mark must timely renew the trademark or the mark will be abandoned (canceled). The Trademark Office will notify the representative of the mark owner, however, the Trademark Office takes no responsibility for timely informing the owner.
The renewal must be submitted 12 months before the expiration date or within 6 months of the grace period.
Australia Trademark renewal fee schedule
The price is US$509 for one class, US$379 per extra class. The government fee is included in the price. Discounts apply for a multi-class mark.
Trademark renewal process
Please contact us using the following form in order to request a trademark renewal. The process is rather simple, our attorney will become your representative and will pay the renewal fee.
How to apply for a renewal in AU
No documents required, only the payment of the fee.
How fast the process is?
The process takes approximately 1-2 days and a notification will be issued.
Possible issues during the renewal process
What if the deadline is missed?
Grace period is 6 months ($100 for each additional month after the expiration date, up to AUD 600 for 6 months).
After the grace period, if you didn’t renew your mark, your trade mark will be removed from the register and can’t be restored. You will have to register a new one here: https://bonamark.com/countries/australia
How to update owner details?
Change of name or address must be completed before starting the renewal process of renewing a mark in Australia.
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