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Home › Areas of law › Trade marks & IP

IP and trade mark lawyer, Sydney

Registering a business name with ASIC gives you no exclusive rights, and neither does a domain. A registered trade mark is the only thing that does.

What we do here

  • Registering a mark, one class or several
  • Responding to an adverse examination report
  • Someone is using your name or logo
  • You have received a letter of demand
  • Licensing or assigning a mark
  • Copyright, designs and confidential information

Copyright, designs and confidential information

Copyright has no register in Australia. There is nothing to file and nothing to pay. Under the Copyright Act 1968 (Cth) it starts the moment the work is written down or recorded. For a literary or artistic work it lasts the life of the author plus 70 years. What it protects is the expression, not the idea behind it. It does not protect a name. A name is a trade mark question.

A registered design protects what your product looks like: its shape, configuration, pattern and ornamentation. It does not protect how the product works. Under the Designs Act 2003 (Cth) the design has to be new and distinctive, judged against what was already used publicly in Australia or published anywhere. Showing the product publicly before you file will usually defeat the application. That includes a trade show or your own website. Registration runs five years and can be renewed once, to ten.

Confidential information has no register either. It is protected by the agreement you sign before the disclosure, and by the duty of confidence. Once it has been disclosed without either, it is generally no longer confidential. An agreement signed after the disclosure does not protect what was already disclosed.

What it costs

Registration is class by class and cannot be broadened later, so the search is done first. IP Australia filing fees are set by the Commonwealth, are not ours, and are charged at cost on top of the figures below.

How long it takesA search and written advice come back within three business days. After filing, IP Australia usually examines within a few months, then there is a two-month opposition period once a mark is accepted. Budget six to nine months to registration on a clean application.
Availability search and registrability adviceSearches of the Register and of common law use, with a written view on your prospects under s 44 of the Trade Marks Act 1995 (Cth).
$750
Classification and filing strategyWhich classes, which specification wording, and what it will and will not cover.
$1,000
Trade mark application, one classPreparing and filing the application and reporting on examination.
$1,650
Each additional classFiled at the same time.
$550
Response to an adverse examination reportWritten submissions on citation, honest concurrent use under s 44(3)(a), or prior continuous use under s 44(4).
$2,000–$3,300
Evidence of use in support of a responseDeclaration, exhibits and submissions where the objection cannot be argued away.
$3,300–$5,500

Indicative ranges for common matters, including GST, disbursements extra. Your fee is confirmed in writing before work begins. Full list for this area.

Questions people ask

With a registration you have a statutory action under s 120 of the Trade Marks Act 1995 (Cth). Without one, passing off and misleading conduct remain available, but you must prove reputation, which is expensive. A registration removes that requirement.

No. It is an examiner's preliminary view and you have fifteen months to overcome it. The strongest route around a s 44 citation is prior continuous use under s 44(4), because it is a right, not a discretion.

As many as cover what you sell now, plus what you are about to. Each class carries its own government fee and its own conflict search, so a citation can knock out one class and leave the rest standing. Filing broadly is expensive and it has a second cost: a class you register but never use becomes vulnerable to removal for non-use. For applications filed on or after 24 February 2019, s 93(2) of the Trade Marks Act 1995 (Cth) allows a removal application three years after the registration particulars are entered on the Register.

No, and there is nowhere to do it. Australia has no copyright register, so there is no application, no fee and no certificate. Under the Copyright Act 1968 (Cth) it starts when the work is written down or recorded. Copyright does not protect a name or an idea. A name is protected by registering a trade mark. An idea is protected only by a confidentiality agreement signed before the disclosure.

Probably not, and it is an expensive thing to get wrong. Under the Designs Act 2003 (Cth) a design has to be new and distinctive. Showing the product publicly before the application is filed will usually destroy the novelty the registration depends on. If it has already been shown, do not assume the position either way. What was shown, to whom, and when all matter.

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