How to register a trade mark in Australia

The application has to be in the name of whoever will own the trade mark. IP Australia lists who that can be: one or more individuals, an incorporated company, the trustee or trustees of a trust, a political body, or a government entity.

Three common choices can't own a trade mark. A business name can't, because the mark belongs to the business owner. A trust can't, because it belongs to the trustees. And a partnership can't, because it belongs to the individual partners.

So if Bluegum Bakery is a business name held by Bluegum Foods Pty Ltd (also invented), the application goes in the company's name.

One more detail: IP Australia notes that any address on the application could be made public. If that's a home address, a post office box or another valid address can be used instead.

IP Australia sets two conditions. The applicant has to reside in Australia or New Zealand, or have an agent who does. And the applicant has to intend to use the trade mark.

IP Australia is direct about this: a trade mark can only be accepted if it's sufficiently different to others, so it's worth checking for registered or pending marks that are similar in name and look. It gives three reasons to search first: it saves time and money on an application, lowers the chance of someone objecting, and helps avoid using someone else's mark.

Search more than the exact name. For Bluegum Bakery that means BLUEGUM on its own, spellings like BLUE GUM, and names that sound the same. IP Australia's free TM Checker app also gives an early read on whether a mark is likely to run into problems at examination.

A registration only gives exclusive rights for the goods and services listed in the application, so this step matters more than it looks. IP Australia sorts everything into 45 classes: 1 to 34 for goods and 35 to 45 for services.

The fee is charged per class. Choosing items from IP Australia's pick list costs $250 per class; writing your own descriptions costs $400 per class. Bluegum Bakery sells bread and cakes (class 30) and runs a café counter (class 43), so a standard application from the pick list would be two classes at $250 each.

Our guide to trade mark classes goes through how to choose them, and the list of all 45 classes shows what each covers.

There are two ways in. A standard application is examined after you file it. TM Headstart is IP Australia's pre-application service: an examiner gives feedback before the application is filed, so there's a chance to change course first. It costs $200 per class for the request, and $130 to turn it into a standard application.

Two points from IP Australia's checklist apply either way. Fees aren't refunded, whatever the outcome. And with a standard application, only minor changes can be made once it's filed.

The main thing to have ready is a representation of the trade mark: the words, or an image of the logo. IP Australia also asks applicants to think about how they want to present the mark and which elements they want covered.

Applications are filed through IP Australia's online services, which needs an account. There's a postal option too, but it costs more: $450 per class.

IP Australia says it usually takes 3 to 4 months to examine an application from the date it's filed. If the examiner raises a problem, IP Australia sends an examination report, and it publishes guidance on how to respond to one.

Once an application is accepted, IP Australia advertises it in the Australian Official Journal of Trade Marks and on Australian Trade Mark Search for two months. During that time anyone can oppose it. Registration follows once any opposition is resolved. A registration lasts 10 years from the filing date.

Our guide on how long a trade mark takes to register shows how those stages played out for thousands of real applications. Once a mark is registered, the ® symbol can be used with it; TM vs ® explains the difference.

Filing doesn't stop anyone else filing something similar. New applications arrive every weekday, and the window to oppose one only lasts two months from when its acceptance is advertised. Searching the register now and then, or having a watch do it, means a close one doesn't slip past. The guide to opposing a trade mark covers what that involves.

How much does it cost to register a trademark in Australia?

IP Australia's application fee is $250 per class using its pick list, or $400 per class without it. TM Headstart costs $200 per class, plus $130 to convert it into a standard application. Fees aren't refunded if the application doesn't succeed.

How long does trade mark registration take?

At least 7 months, according to IP Australia. Examination usually takes 3 to 4 months from filing, and an accepted application is then advertised for two months before it can be registered.

Can I register a trademark in my business name?

Not in the business name itself. A business name can't own a trade mark, so the application goes in the name of the business owner, whether that's a person, a company or the trustees of a trust.

Can I change my application after filing?

Only in small ways. IP Australia says a standard application allows only minor changes after filing, which is one reason some applicants use TM Headstart first.

• How to apply for a trade mark (IP Australia)
• What to consider before applying for a trade mark (IP Australia)
• Why search for existing trade marks (IP Australia)
• Trade mark timeframes and fees (IP Australia)
• What are classes of goods and services (IP Australia)
• Apply for a trade mark (IP Australia)
• How to respond to an examination report (IP Australia)