We’ve put together a list of our most frequently asked questions around Trade Marks and Intellectual Property, so you can get an understanding of what it is, how it applies to you, and how to protect your business.
Once a trade mark is registered, it initially lasts for 10 years from the date of filing your application. It can be renewed every 10 years by paying renewal fees to ensure that your trade mark is kept alive indefinitely. Government renewal fees are currently $400 per class but these could change at any time.
It’s important to note that you must actively use your trade mark once it is registered or it can be removed on the grounds of non-use. Click here to learn more about Non-Use Removal Application.
Once you have a registered trade mark it is strongly recommended that you mark your brand and any products with the ® symbol. This puts others on notice to respect your trade mark. It is illegal to use the ® symbol before your trade mark is registered.
You may use the ™ symbol on your brand material if you have not filed a trade mark application or you have a pending trade mark but it is not essential and it gives you no legal rights.
Yes, an online request needs to be made to IP Australia stating the new name and/or address.
If you have changed your name you need to provide evidence to show the change. If it is a minor amendment to your name, no evidence is generally required.
No evidence is required if you are simply updating your address.
A trade mark must be registered in the name of an individual, a company or a trust. It’s not possible to register a trade mark in the name of a business.
Before filing a trade mark application it’s important to make sure that the applicant owns the trade mark. This is particularly important if your trade mark includes artwork (ie, a logo). The copyright in the artwork must be owned by the applicant. Therefore, the applicant may need to purchase the copyright in the artwork before an application to register a trade mark is filed at IP Australia.
Yes, in some circumstances. If you have filed a TM Headstart application you have a small time frame (usually 5 days) to make amendments. You may have to pay an additional fee to do this.
It’s not possible to make substantive changes to your actual trade mark once it’s been filed at IP Australia. A new application will need to be filed.
You can change your name and address and limit the goods and/or services you originally filed your application with, by filing an amendment request at IP Australia.
It’s recommended to search the IP Australia database to check there are no identical or similar trade marks already on the register.
In saying that, if you are filing your application through the TM Headstart system, a pre-assessment application is filed and IP Australia undertakes a preliminary search to check if they anticipate there to be any problems with your application. This is a quick and cheap way to find out about any potential issues IP Australia will raise before you pay the full filing fees.
Once a trade mark is filed at IP Australia, only very limited amendments are allowed to be made. If your trade mark is rejected, it’s not possible to get a refund on the government fees.
This is why it’s best to get legal advice before filing your application as to whether or not your trade mark is likely to succeed.
No. Once your application is accepted, you will receive the official Notice of Acceptance. Assuming no objections are raised during examination, you should receive the Notice of Acceptance about 5 months after filing your application.
Your application is then advertised in the Trade Marks Journal and it will be open for public inspection for 2 months. During this time anybody may oppose your application.
If an intention to oppose is filed by a third party, you will receive notification from IP Australia.
If no intention to oppose is filed, your application will proceed to registration and the Certificate of Registration will issue around 7.5 months from filing your application.
No. Having a registered trade mark doesn’t automatically entitle you to the domain name.
When responding to an Adverse Report, it’s best to get legal advice relating to your particular case. Your advisor can then prepare appropriate arguments and file it at IP Australia.
Yes, once your application has been filed with IP Australia, your trade mark details are uploaded to the IP Australia database for anybody to view. This includes:
If you are concerned about having your personal details on record, you can use a PO box or if you are engaging a lawyer, you can use their address.
Trade marks need to be renewed every 10 years.
If your trade mark is not renewed by the expiry date, there is a 6 month grace period within which you can pay the renewal fee to keep your trade mark alive. Monthly extension fees will also need to be paid to IP Australia.
Once the 6 month grace period has expired, your trade mark will be removed from the register and you will no longer have any rights to your trade mark. A new application will need to be filed.
There are a number of factors to consider before re-filing your application, such as someone else is already using the same or similar trade mark to yours. Because you have previously registered your trade mark, it does not automatically mean you will get it registered again.
If you have an expired or removed trade mark please get in touch with us so we can give you the best course of action going forward.
When you file a request at IP Australia to register a trade mark, this is known as a trade mark application. Your trade mark application is then run through an examination process and if allowable, your trade mark application will get accepted. Your application is then advertised in the Trade Marks Journal which means it is open for the public to oppose your application for a period of 2 months. If your trade mark is not opposed you’ll then receive a Certificate of Registration.
Once you receive a Certificate of Registration (at least 7.5 months after filing your application), you will have a trade mark registration. A trade mark registration gives you legal protection for the next 10 years when you can pay renewal fees every 10 years to keep it alive indefinitely.
Once a trade mark application is accepted, the application is advertised in the official Trade Marks Journal. Other people have 2 months from the date of advertisement to oppose the application by filing a notice of intention to oppose.
If you have a trade mark registration that you did not intend to use on the goods or services for which you have protection for, someone may oppose your registration on the ground that you did not intend to use it.
If you have a trade mark registration which you have used but have stopped using it, someone may apply to have your trade mark removed on the grounds of non-use.
Click here to see the costs for a trade mark application in Australia from filing to registration.
GST is not payable on any IP Australia fees.
If you have any questions at all, please don’t hesitate to contact us.
If you have a registered trade mark, it’s advisable to add the Registered Trade Mark Symbol to your branding.
The easiest way to do this is:
Hold down the “Alt” key and type 0174. This will create ®
Hold down the “Option” key and press “R”
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