Imagine going through the lengthy trade mark application process only to find your application is rejected and the efforts, time and money you invested have gone to waste. Worse still – you have lost your important place on the Trade Marks Register which could mean that a competitor has its similar mark ahead of your application.
The application process for trade marks in Australia takes a minimum of around 8 months. This is often the minimum time frame wherever you are in the World but it can take up to 24 months to register your trade mark in some countries. Also, in most countries no refund is provided by the Trade Marks Office if it ultimately rejects your application.
So, for peace of mind that you have the application right in the beginning, make sure you have had the necessary research done, understand the criteria for registration and the trade mark will likely be accepted by IP Australia.
Consider the following points before applying for a trade mark in Australia or generally anywhere else in the World:
1. Conduct a thorough search of Trademarks Office database Register
This will help you discover whether there are any already existing registered trade marks or pending applications that might be a problem for you. It should confirm that you are not infringing any existing trade marks and that any application you file is likely to be accepted for registration. This can be critical as similar names are also relevant to the success of your application.
2. Avoid using common signs
Commonly used phrases and descriptive words are often rejected. These include things such as:
- Surnames: a surname is generally regarded as common if it has been used over 750 times in Australia.
- Geographical names: for example, a country such as Australia or a suburb such as Wynyard.
- Commonly used phrases: for example, “go green” for environmental services.
- Words that describe the goods or services: for example, “cool” for air conditioning
So selecting something unique to your industry will usually get you through.
3. Avoid prohibited signs
Pinnacle TMS recommends that companies and businesses avoid attempting to trademark prohibited signs such as flags (e.g., the Australian flag) and hallmarks.
There are other restrictions that may prevent your application from being accepted by the Trade Marks Office that you need to be wary of.
Don’t waste your time and money on a trade mark that will be rejected.
This is particularly important if you intend growing your business and filing applications for your trade mark in other countries and want to use the Australian application/registration as the base to do that.