Before You Apply

Before you apply for your trade mark, you should take some time to familiarise yourself with the general trademark registration process, and to also understand what types of trade marks are likely to be accepted by the examining government body.  Our website provides you with a good starting point in this regard, but we will, of course, work with you to ensure we get the best possible outcome for your brand or name.

What types of trade marks are registerable? 

Trade mark applications are submitted to IP Australia (or USPTO in the US or IPONZ in NZ) who examine the mark for registrability. To be registered, a trade mark generally cannot be:

• descriptive or laudatory of your goods and/or services; or
• too similar to another trade mark on the Register; or
• a common surname; or
• a geographical place name (if that place has significance for the particular goods and/or services).

However, there are exceptions to these rules, particularly if the trade mark has been used for some time and acquired a reputation.

Trade mark searches

A trade mark may not be registrable where it is considered too similar to a mark that is filed prior in time. It is therefore advisable to search the trade mark register for marks similar to your intended mark before filing the application, particularly where money is to be invested into the mark prior to actual registration (a minimum of 7½ months from filing). Searches can also alert you to any prior marks that are so similar to yours that you may potentially be sued for trade mark infringement.  Marketplace searches are also important as they may reveal similar brands or trade marks that although not registered, may have some impact on your decision to use your intended trade mark. Searching for trade marks on the registry is a fine art and we recommend the use of a trade mark attorney to conduct these searches before filing for a trade mark. However, you may wish to conduct some preliminary searches yourself using, the Australian Trade Marks Online Search System (ATMOSS) or the USPTO and IPONZ website. A trade mark search conducted by Trademarkings will be issued with a full report detailing your prospects of achieving registration.