This IP First Response website has been designed to help IP rights holders navigate IP infringement and enforcement by making it visible, accessible, and to provide information about the factors involved in pursuing different options. It does not provide legal, business or other professional advice, and none of the content should be regarded as recommending a specific course of action. We welcome any feedback via our IP First Response feedback form and by emailing us.
What is it?
If you haven’t already done so, registering your trade mark with IP Australia can help you respond to suspected copying or infringement.
Registration establishes ownership and exclusive rights, giving you stronger legal grounds to take action against current and future infringers.
A trade mark identifies your unique brand, product or service from other competitors. It might be a logo, phrase, word, letter, colour, sound, smell, picture, movement, aspect of packaging or any combination of these.
You might have some rights to protect your trade mark even if it’s not registered with IP Australia. However, trade mark registration makes enforcing your trade mark easier and increases your enforcement options.
What are the benefits?
Registering a trade mark offers a range of benefits which can simplify the enforcement process. It provides:
- Exclusive legal rights to use the trade mark commercially (on the goods and services claimed).
- Robust and universally recognised registration (within Australia).
- Clear evidence of ownership date to support your claims.
- Strong negotiating position for settlement discussions.
Some enforcement options are only available if your trade mark is registered. These include the ability to take action against infringement under the Trade Marks 1995, and the ability to lodge an objection to imports of trade mark-infringing goods at the border under the Australian Border Force (ABF) Notice of Objection scheme.
Registration can also make it easier to commercialise and licence your trade mark, and for others to be aware that you claim the rights. Your trade mark will appear on a public, searchable database showing your claim and its scope.
What are the risks?
- Registering your trade mark requires an upfront fee that must be paid before the trade mark is examined. This fee is for the examination of the trade mark and is therefore non-refundable if the trade mark is not registrable.
- Applications to register a trade mark are generally public (an exception is TM Headstart). Your competitors might become aware you are trying to register your trade mark. They may take actions like trying to register their own similar trade mark, or oppose your application.
- You might discover that there is a problem with your trade mark, or that someone else has already registered a similar trade mark. This could mean you need to reconsider whether your trade mark is right for you.
- An Australian trade mark registration does not cover you in overseas markets.
What might the costs be?
There are two main ways to apply to register a trade mark in Australia:
- standard application
- TM Headstart.
These have different costs and timeframes.
TM Headstart fees
Registering a trade mark through TM Headstart costs a minimum of $330. This covers submitting your pre-application (step 1), and finalising your application (step 3). If you need to make changes before finalising your application (step 2), this will add to your cost.
| Action | Fees (per class) |
|---|---|
Step 1 - TM Headstart request
| $200 |
Step 2 – Amendments to an application (optional) Change of trade mark representation (optional) | $150 |
Step 2 – Amendments to an application (optional) Addition of new classes (optional) | $200 |
| Step 3 - Conversion to a standard application (Part 2 fee) | $130 |
Standard application fees
A standard trade mark application costs a minimum of $250.
Your fees will be lower if you use the picklist. The picklist is a searchable list of 60,000+ goods and services categorised into 45 classes relevant to trade marks. This helps examiners to know exactly which goods the trade mark is intended to apply.
| Action | Fees (per class) with picklist | Fees (per class) without picklist |
|---|---|---|
| Trade mark application | $250 | $400 |
How much time might be involved?
While TM Headstart and standard applications will have different examination timeframes, registration of a trade mark takes at least 7 months to finalise. This is because a trade mark cannot be registered until at least seven and a half months after its priority date.
What do you need to proceed?
You will need to set up an account with IP Australia’s Online Services. There is a step-by-step guide to applying for an Australian trade mark on our website.
You don’t need a lawyer to apply. However, if you would like support in making your application, you can contact an IP professional such as a registered trade mark attorney via Find an IP attorney or firm | Trans-Tasman IP Attorneys Board.
You will need an address for service in Australia. This just means a postal address where you can be reached.
Before applying, consider using TM Checker, a free online trade mark checking tool to check the registrability of your potential trade mark. TM Checker can be accessed here: TM Checker
See also
Before you take any action, you should consider whether you need legal or professional advice specific to your situation. It is important to know what rights you have, what remedies are open to you, and the cost and likelihood of success. IP Australia provides information on getting professional assistance with your IP. In addition, the Institute of Patent and Trade Mark Attorneys Australia (IPTA) offers free 30 minute consultations with an attorney.