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Why register a trade mark in Australia?

Registering your organisation's logo, or name, as a trade mark in Australia:

• means that your organisation "own its brand";
• gives your organisation the exclusive right to use the registered trade mark for the classes of goods or services for which the trade mark is registered; and
• is a real advantage if you ever want to sell the organisation — any potential buyers are likely to be reassured by the fact that your organisation's key intellectual property assets are properly registered and protected.

Why use Cleardocs to register a trade mark in Australia?

Using Cleardocs to apply to register your trade mark in Australia provides you with a cost effective and convenient online service with 2 key advantages:

1. Help with choosing which classes you need to register for The Cleardocs trade mark application process involves you using our online, interactive tool that helps you to easily work out — or just think about — the classes of goods and services for which to apply to register your trade mark. You can use that tool before you need to pay — so if you'd like to trial the tool, then start a trade mark order here and have a go. It's easy and free to try; and

2. Preliminary review After you complete your trade mark application order on Cleardocs, we arrange a preliminary review before your application is officially filed. This review knocks out most applications which would most likely be rejected by the government's trade marks examiner. If the review knocks out your application and you choose not to proceed, then we will refund the government application fee (which at that stage we would have collected from you, but not yet paid to the government). In all cases, it is ultimately a question for the trade marks examiner as to whether an application is accepted. After the examination you will receive a detailed letter outlining the examiner's decision. The government application fees are not refundable if the examiner rejects the application.  The purpose and role of the preliminary review we arrange is further outlined below.

What sort of trade mark can you apply to register through Cleardocs?

You can use Cleardocs to apply to register as a trademark an English word or name etc.

(We are developing the ability to enable you to apply to register:

• a logo or a logo with words, with a name etc; and
• a word or phrase in a foreign language — you will need to provide an English translation.)

Shape, colour, sound, or scent? Although it is possible to register a shape, colour, sound, or scent as a trade mark, you can't do that online through Cleardocs — for more information, click here.

What is the purpose of the preliminary review Cleardocs arranges before the trade mark registration application is officially lodged?

When you use Cleardocs to apply to register your trade mark, we arrange for a preliminary review of your application to make sure it complies with the necessary filing requirements. The review is conducted by Remarqueble Pty Ltd, which is the organisation that provides the technology to handle the application and registration through Cleardocs.

However, there is no guarantee from anyone that if your application passes the preliminary review, it will be registered. But the preliminary review is a useful basic check.

As part of the preliminary review someone may contact you about your application. They may:

• suggest how you might change your application to make it more easily registrable; or
• suggest that you cancel your application as it is likely to be rejected.

If you decide to cancel your application before the reviewer arranges for it to be lodged, then you will receive a refund of the government application fee (which at that stage we would have collected from you, but not yet paid to the government).

What types of trade marks are difficult to register?

Registering any of the following as a trade mark may be hard (expensive) and perhaps impossible:

• words which are descriptive or which are commonly used — for more information, click here

  Descriptive words or commonly used words?

  Trade marks distinguish one trader from another. Therefore, some words are more difficult to register than others — for example, it's hard to register:

  • descriptive terms — for example, "apple" was acceptable for computers but would be rejected for fruit or for a fruit shop;
  • common surnames and geographical place names by themselves — for example: "Smith", "Pappas", "Beijing", or "Jamaica";
  • very short combination of letters and numbers — for example: "VP" or "F9"; and
  • commonly used words or phrases — for example: "Best Quality" or "On Sale".

  Each of those examples is not distinctive enough to become a registered trade mark by itself. So to register those trade marks, you would almost certainly need to provide evidence that when people think of that word or phrase, etc., they think of your organisation (and not of anyone else). Providing that evidence is likely to be expensive, and might be impossible.

  Are there any solutions to these "descriptive" etc. issues?

  Yes, if you combine a trade mark of the type discussed above with another word or logo, then that can help to make it more registrable — for example: "Smith Plumbing" would be difficult to register alone, but might be easier if you combined it with a unique logo or slogan.

• words which are substantially identical, or deceptively similar, to an existing trade mark for similar or closely related goods and services — for more information, click here

  Words which are deceptively similar to an already registered trade mark?

  If you try to register a trade mark that is substantially identical, or deceptively similar, to an existing trade mark for similar or closely related goods and services, then you will most likely need to amend your description of goods and services so that it does not overlap with the existing trade mark.

  For example:

  • "apple" could be registered by one company for computers and a different company for t-shirts;
  • but different companies couldn't both register "apple" for computers.

  You also need to be aware that the owner of an existing trade mark may object to the registration of the trade mark you apply to register. While rare, if anyone objects, then that can delay things, add to the cost and, sometimes, result in your application being rejected. Therefore, before you apply to register a trade mark, it is worth searching public information (for example, the internet) to make sure that nobody else is using the trade mark you have in mind.

Also, the law makes it impossible to register some words, for example, "ANZAC" or anything that might be scandalous or misleading — for more information, click here

For what sort of goods or services can you register the trade mark?

Trade marks are registered for goods and services. For example, "Apple, Inc." might register its trade marks for "computers, mp3 players, mobile phones".

All goods and services are grouped into official classes. So when you apply to register a trade mark, you need to choose the classes in which you apply.

Our application process includes an interactive, online tool to help you choose — or just think about — the classes for which you want to apply to register the trade mark.

You can use the tool for free before you need to pay. So if you'd like to trial it, then start a trade mark order here and have a go — it's easy and free to try.

The preliminary review mentioned at the top of this page checks to see whether the classes of goods and services for which you have applied to register the mark are in the right classes.

In whose name are you applying to register the trade mark?

When you apply to register the trade mark, you need to apply in the name of the person who will own the mark. So our interface asks you whether you are applying:

• in your company's name.
• in your own name
• in your client's personal name
• in your client company's name.

Does the trade mark need to be in use?

To apply to register a trade mark, you need to confirm either that:

• the trade mark is being used by the applicant (or with his or her consent) in relation to the relevant goods or services stated; or
• the applicant intends — in good faith — that to happen.

In which country can you apply to register a trade mark through Cleardocs?

You can use Cleardocs to apply to register a trade mark in Australia. {More to come yet}

A trade mark registration is effective only in the country in which it is registered — so a registration in Australia doesn't help protect your trade mark in any other country.

What is the process for registering a trade mark in Australia?

Registering a trade mark in Australia involves the 3 stage process below. :

1. You apply to IP Australia to register the trade mark. If you use Cleardocs to apply to register your trade mark, then:

• we arrange the preliminary review outlined at the top of this page; and
• if the trade mark passes the preliminary review (or is amended during that review), we arrange for your application to be officially lodged with IP Australia.

IP Australia is the Commonwealth government body that administers Australia's intellectual property rights system for trade marks, patents, etc.

2. IP Australia reviews your application to make sure the trade mark is registrable etc. and whether it conflicts with any other existing applications or registrations. This review is done by a person referred to as the Examiner.

As part of the review, the Examiner advertises the details of your application in the Official Journal of Trade Marks. This is to allow people with concerns to object to the registration of your trade mark. They have 3 months from the date of the advertisement in which to object (an objection is known as an "opposition").

Opposition to a trade mark application is rare, but if anyone raises an objection, then that can delay things and it can be expensive to resolve. Before you apply to register a trade mark, it is worth searching public information (for example, the Internet) to make sure that nobody else is using the trade mark you have in mind. The preliminary review we arrange does a high-level preliminary review for you.

3. IP Australia registers the trade mark (assuming there are no objections, etc. or that any objections are resolved in your favour).

Is there a chance that your application will be rejected? Yes, the Examiner may reject your application for various reasons — for example, as explained above, if the mark is deceptively similar to an already registered trade mark; too descriptive; too common; scandalous; misleading; or protected by law. If your application is rejected, then the only change you can make is to narrow the goods and services for which you have applied to register it.

However, if the application is rejected and you cannot, or do not want to, amend it, then the fees you have paid (to Cleardocs and to IP Australia) are non-refundable. To reduce this risk, we arrange for the preliminary review outlined at the top of this page. Nearly all applications that pass that preliminary review are accepted (very few are rejected). During the preliminary review, the reviewer may contact you if they think that your application may be rejected. If they do that, then you will have the opportunity to cancel your order and to receive a compete refund of your fee (including the IP Australia fee).

How long does the government's process take?

The government process takes at least 7.5 months — even if everything goes smoothly.

What date does your trade mark protection apply from?

Normally, the protection your trade mark provides applies from the date you apply to register the trade mark (assuming it ends up being registered). However, if have you applied in another country to register the trade mark in the previous 6 months, then you may be able to back date the application you make through Cleardocs to the date of the earlier application.

This process is not automatic — if you would like further information, then please call us on 1300 307 343 and we will arrange for you to have a free 10 minute phone call with experts who can explain what's involved.

Can you use Cleardocs to make a "series application" to register a trade mark?

If you want to apply for a "series application", please call Cleardocs on 1300 307 343. A series application is when you have several nearly identical trade marks that form a series of marks — for example: "Idak Clothing", "Idak Footwear", "Idak Headgear" . . . Read more

How much does it cost to register a trade mark in Australia through Cleardocs?

IP Australia and Cleardocs each charge a fee for both the application (at the start) and the registration (at the end). You also need to consider:

• the potential costs of handling any issues raised during the Examiner's process (these are impossible to estimate now — and are often zero); and
• the fees for renewing the registration when it expires after 10 years.

You also need to remember that if your application passes the preliminary review mentioned at the top of the page, then the fees (from both Cleardocs and IP Australia) are non-refundable. That is so even if, for example, your application is rejected or if you decide not to register the trade mark at the end of the application process. (Remember, if during the preliminary review the reviewer thinks that your application may be rejected, then you have the opportunity to cancel your order and to receive a compete refund of your fee.)

This table shows the costs: