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Registering a Trademark in Australia

There are many reasons why you may wish to register your trademark. There are very few reasons of why you wouldn’t. By registering your trademark early on in the process of starting your business, you are protecting one of your most important assets – your brand!  Registering your trademark will provide you with legal avenues to be able to defend your brand’s image in the event that someone attempts to register a conflicting trademark. Additionally, by protecting your intellectual property, you are making your business more attractive (and thus valuable) to any potential investors.

With this in mind, there are a few steps to getting your trademark registered in Australia.

  1. Decide if you have a trademark: A trademark is different to a design right. A trademark is a sign that can include words, phrases, logos, images, and even such things as movement, sound or smell. Of course, a trademark will often be a combination of these things!
  2. Understand your goods and services: With the application for filing a trademark, you need to provide a description of the goods and/or services you intend to use your trademark on. There is a long list of different classes to choose from—in total there are 45 categories of goods and services! It is important that you choose the right classes correctly. On the other hand, you do not need to register in as many classes as possible as they may not provide additional coverage and you may be hit with non-use claims. A good guide is to think of what your final product is— what is it that people are paying for. Keep in mind that if at a later time you expand your business, you can always apply for additional trade marks.
  3. Searches: Prior to registration, a detailed search should be conducted to ensure that there are no similar trademarks which may have already been registered or are pending registration. People often underestimate the difficulty of this stage and will not understand that merely searching for an identical mark is not sufficient. It requires expert attention to make sure that there will be no potential conflicts waiting to happen.
  4. Apply: Once all the information has been prepared, submission is able to take place. This can be carried out online on the IP Australia website and if all the information has been correctly gathered, it will only take about 15 minutes. The application fee for the most popular form of applications is $250 per class.
  5. Application outcome: After about 3—4 months you will be notified about the outcome of your application. If your application is successful, you will be notified as such in writing. The trademark will then be advertised as “Accepted”, with a window of 2 months where someone may oppose the trademark. After two months without any opposition, the trademark will be listed as fully registered. If the trademark application is not accepted, then you will receive an adverse examination report and have 15 months to respond to this determination and resubmit your application.

The process has its technical aspects so it is important that you seek help from professional experts. Over the years, we have seen a number of companies run into problems because they have underestimated or overlooked the importance of protecting their intellectual property. For this reason, it is critical that you have a strong plan in place from the outset of starting your business.

Harris Gomez Group is a Common Law firm, with offices in Santiago, Bogotá, and Sydney. We also have legal teams in Mexico, Peru, Brazil, and Argentina. Over the last 16 years, we have been supporting foreign companies with their growth in Latin America and Australia. Many of our clients are technology companies, service providers and engineering companies that focus on the mining, energy and infrastructure markets.

To better understand how we can support your management team in the Region, please contact Cody Mcfarlane at cmm@hgomezgroup.com