Registering a trade mark in Australia

Registration is not the same as use

Registering a business name with ASIC gives you no exclusive rights. Neither does a domain name or a company name. A registered trade mark is the only thing that gives you a statutory monopoly to use the mark for the goods and services registered, and the right to stop others.

What is registrable

A sign capable of distinguishing your goods or services. The grounds that defeat most applications:

• Section 41. The mark is not capable of distinguishing because it is descriptive. "Sydney Fresh Bread" for a bakery describes the goods, and traders should be free to use those words.
• Section 44. The mark is substantially identical with, or deceptively similar to, an earlier mark registered or applied for by another person for similar goods or closely related services.

Classes

Protection is granted class by class under the Nice Classification, which has 45 classes. A mark registered in class 25 for clothing does not stop use in class 43 for restaurant services. Choosing classes badly is the most common and most expensive error, because you cannot broaden the specification later.

Timing

Examination typically issues a few months after filing. If the mark passes, it is advertised as accepted and there is a two-month opposition period. If nobody opposes, it registers, with protection dating back to the filing date. Registration lasts 10 years and is renewable indefinitely.

Non-use

A registration can be removed for non-use on application under s 92. Two different periods apply. The period of non-use relied on is a continuous period of three years ending one month before the application: s 92(4)(b). The earliest the application can be made is three years after the registration particulars were entered on the Register, for applications filed on or after 24 February 2019: s 93(2). Marks filed before that date keep the old rule of five years from the filing date.