In Australia, the trade mark registration process involves several steps commencing with a search and extending beyond registration.

Australian Standard Trade Mark Procedure

Upon filing an application,the examiner will carry out their own trade mark search is carried out in order to identify any obvious conflicts in terms of earlier registered rights. It is wise to have pre-filing search carried out in order to identify potential ahead of filing a trade mark application.

Applicants sometimes carry out their own searches, however a trade mark attorney will be better placed to carry out a prior search, taking account of the factors identified in legislation and case law as to what does and does not constitute a conflict

This first step in the trade mark filing processs is to a trade mark application. The application preparation stage involves the drafting of the terms of the trade mark, ensuring that all formalities are met. The application is then submitted along with the associated official fee.

It is vital that all required information pertaini to the rights filed for is complete and correct since only limited changes are permitted post filing. Incorrect or incomplete information may result in rejection of the application or a inadequate range of protection being granted in relation to the trade mark rights ultimately granted.

Following submission of the application to the Trade Marks Office (IP Australia),through an appointed examiner, will assess the application and issue either a Notice of Acceptance or an examination report. In instance the application does not meet the legislative criteria set by IP Australia in line with the relevant legistation of the Trade Marks Act 1995, an adverse examination report will be issued to the applicant.

The applicant may then respond to the adverse report by providinge legal arguments to support their application or taking other available steps to meet the requirements of acceptance. These actions must be taken and acceptance achieved within the specified time frame, being 15 months from the date of the notification.

The Trade Marks office will then carry out a further examination of the application in light of the further submissions.

Upon acceptance of the trade mark application, IP Australia publishes the trade mark in the Australian Official Journal of Trade Marks, which is publicly available. Publication of the trade mark commences a two-month opposition period in which any third party may come forward to oppose the registration of the trade mark.

A trade mark opposition can be lodged by any third party on the basis that the trade mark is ‘deceptively similar’ to an earlier right, or ought not be registered by virtue of another rule governing the registration of trade marks in Australia.. A trade mark opposition will result in either a refusal to registered trade mark or the opposition may be denied, in which case the application will proceed to registration and certification in the usual way.

Once registered, the trade mark owner is granted sole rights to the use of the trade mark and the other benefits of registered ownership. The registrant is responsible for maintaining their trade mark in order to maximise the trade mark's commercial benefits, for preventing other parties from capitalising on their intellectual property right by enforcing their trade mark, for renewing ownership throughout the trade mark's lifetime by ensuring that renewal fees are paid every 10 years, and for protecting the trade mark by preventing others from using it in a way that dilutes the brand and diminishes the value of the IP..