Notes when registering a trademark in Australia

Trademark in Australia, with its developed economy, high quality of life and high consumer consciousness, is a potential for businesses. To succeed here, it is extremely important to build and develop a strong brand. Here are some areas that businesses can take advantage of to make the most of opportunities in the Australian market. Australian consumers are increasingly concerned about health and the environment. Therefore, the demand for clean, organic, naturally derived food and beverage products is increasing. Sustainable fashion trends are becoming increasingly popular in Australia. Young consumers are particularly interested in fashion products that are produced in an environmentally and socially responsible way. Experiential tourism is a strong trend in Australia. Visitors here want to explore wild nature, local culture and unique activities. The Australian government is encouraging the development of green technologies and renewable energy. This is a great opportunity for businesses in this field. To succeed in the Australian market, businesses need to build a brand that is strong, sustainable, and culturally relevant to Australians. However, trademark registration must also comply with the provisions of Australian intellectual property law. Here are some notes when registering a trademark in Australia.

Notes on the principle of precedence in trademark registration in Australia

One point to note about the trademark registration system in Australia is the flexible combination of “first to use” and “first to file”. This means that the intellectual property law has the flexibility to support the applicant in registering trademark protection.

Why did Australia choose a hybrid system?

Combining these two principles has many benefits:

• Protect the rights of actual users: Businesses that have invested time and resources in building their brands will be protected. They are not disadvantaged if someone else has filed an application for registration in advance but has not actually used the trademark.
• Encourage the use of trademarks: Businesses will be motivated to use their trademarks effectively to prove ownership.
• Creating transparency: Trademark registration creates a public database, making it easy for businesses to check the availability of a trademark before using it.
• Promote healthy competition: Businesses will have to compete to create better products and services, while protecting their brands.

The meaning of the “first to use” and “first to file” principles

• First use: The use of a trademark in Australia before someone else has filed an application is considered a strong proof of ownership. However, to prove this use, you need to have specific evidence such as invoices, advertisements, sales reports,…
• First Filing: Filing a trademark registration application will create a clear legal imprint of your ownership. The registration certificate will be the strongest evidence to protect your rights in the event of a dispute.

Notes on trademark registration in Australia

Trademark Availability Check

Before officially registering a trademark in Australia, it is extremely important to check the availability of the trademark. This helps you

• Ensure uniqueness: Your trademark will not duplicate any previously registered trademark, avoiding unnecessary legal hassle.
• Increase the likelihood of successful registration: A unique and innovative brand will help you build a strong brand and compete effectively in the market.
• Save time and money: Avoid trademark registrations being rejected due to duplication, saving you time and money.

You can check through the following methods:

• Use an online lookup tool: The Australian Intellectual Property Office offers free online lookup tools on webite, making it easy to check the availability of a trademark. Just enter the name of the trademark and the type of goods and services you want to protect into the search engine, the system will automatically compare with the database of registered trademarks.
• Search on online platforms: In addition to the official search tool, you can also search for information about trademarks on e-commerce platforms, social networks, and websites related to your industry. However, this search result is only for reference and is not as accurate as looking up directly on the database of the intellectual property office.
• Expert advice: If you are not confident about the test, seek the help of intellectual property representatives. They will help you conduct the examination in a professional and effective manner and provide further advice on issues related to trademark registration.

Trademark Registration Dossier in Australia

The applicant will need to provide the following information:

• Ownership information and contact information (including postal address, i.e. postal code);
• A sample of the sole proprietor’s trademark (for example, an image of a logo or audio recording);
• A list of products and/or services to which the applicant’s trademark intends to apply and the corresponding group number;
• Payment documents;
• Power of attorney (in case the applicant files the application through a representative).

Trademark Application Processing Process in Australia

It usually takes three to four months for a trademark application to be examined. The Australian Industrial Property Office will notify the applicant of the result via the registered online service mailbox during the trademark application process. If the applicant’s application passes the due diligence process, the Australian Industrial Property Office will proceed with the publication. The applicant’s trademark is published within two months in the Official Australian Trademark Bulletin and the Australian Trademark Search. Anyone can object to the applicant’s trademark during this time. If no one objects to the registration of the trademark by the applicant, or resolves all of these objections through a response, the Australian Industrial Property Office will proceed to issue a protection title.

If you wish to apply for trademark registration, please contact Viet An Law – IP Firm for the most effective support.