How do I Trademark a Name in Australia?

There are lots of websites that complicate this answer, so we are going to cut to the chase and explain how to easily register a trademark in Australia and if required, Trademark worldwide in a few simple steps.

Why Trademark? – Because it offers far more protection for your brand and business name than a company registration or business name registration. Legal eagles will tell you the trademark holder pretty much trumps all other forms of registration and the age old “possession is 9/10ths of the law” holds up, because it is a costly process to prove otherwise.

1. Think Smart.
Your brand and logo are important and if you have one already that you are passionate about, we hope it isn’t registered. If it isn’t, consider carefully; Is it worth potentially not owning your own trademark or fighting an existing trademark OR… is it time to rename the brand, company, logo into something you can own outright and confidently move forward with?

2. Are you registering a logo, word, or both?
If it is a logo, have a high resolution JPEG (at least 600 pixels in width or length) ready for the trademark registration process. If it is just a word you are trademarking, then this step is not required. Note – if you are planning to register both a word and a logo, you will obviously still need to submit the logo. If your logo is basically just text in a nice typeface, consider this trick we learned from legal many moons ago; put a box around it (examples below). Why do this? It makes your typeface look like a finished logo. Otherwise submit for the word version first.
Trademark Example without Box

Trademark Example with Box

2. What Class?
In Australia there are 45 Classes of Goods and Services. Your Trademark will need to be filed in one or more of these classes. You can find these classes here and search the database at the same time for keywords you think are relevant.

3. Pre-Registration and Searching.
Search here and be ruthless. If your name or trademark appears in any search you have 3 options in our preferred order. (a) Change your brand name, (b) Try and register for a different class (point 2) than the existing trademark OR (c) If your un-registered trademark has been used well before someone else’s trademark was approved, consider legal advice. In our opinion only (a) is worth pursuing, possibly (b).

You may, however also like to spend (or waste) extra time and money and get the government or trademark specialist to do a search for you to check if the trademark is suitable for registration and advise. Take a look at TM Headstart or Google Trademark Registration Assistance.

4. Online Registration 
Trademark Registration is simple; Go through the process online using this direct link** by clicking new application on the left. Once registered, the Trademark office will be in touch with your acceptance and notice periods. Good Luck! ** PLEASE NOTE: as of Mid 2014, the process has changed and you now need an eServices Login before you can register a trademark – so a little more tricky but still possible direct. Once you have signed into eServices (which basically just remembers your details), you should choose Register a Trademark directly (note: not TM HeadStart if you want to skip this process).

5. International Trademarks.
Although the above outlines the process for the Australian market, if your business has potential in international markets, you need to consider these steps now and protect your brand. For international Trademark Registration, we advise using the Madrid System. You can do this yourself or because the forms are a little more complex, you don’t need to pay a lot more to have a reasonable legal firm apply on your behalf.
If you need assistance, or have questions, feel free to ask us. We do note this page is not to be used as legal advice, we are only trying to simplify the process if you would like to complete the application yourself.  Seek advice from a trademark specialist or your lawyer otherwise.  

    Comments
  1. Joanna Chen Said :
    "Great article! I am actually in the middle of registering my migration agency in Australia and this article helps me a lot! Thanks Michael !"
  2. Joanna Said :
    "Great article! I am in the middle of registering my own business and I am considering to register the wordmark. Shall I register multiple phrases or one single word is sufficient? For example I would like to call Visa, shall I just register 'Visa' or is it better to include ' Visa Migration, Visa Grant' on one application? Thank you very much !"
    • Michael Simonetti Said :
      "Hi Joanna, thanks for the feedback. Ok! find the right balance that works for you when registering, we recommend doing some searching first to see what others have registered so you don’t get knocked back easily. We’ve had success registering an initial trademark, visual mark first, and then registering a supplementary registration under a word mark. Good luck."
  3. Mel Said :
    "Hi Michael, Thanks for this informative article. I have a cosmetic brand that I'm currently waiting for the trademark to be approved for the overarching company name (Lets call it Company Name in this example). In the mean time, I've begun thinking about the individual product names and am wondering if I need to trademark each of these individual product names as well? For example I have 3 products, for simplicity lets call them Product 1, Product 2 and Product 3. Do I simply submit a trademark for each of the product's names e.g. "Product 1", "Product 2", and "Product 3"? Or if I'm thinking of calling them "Product 1 by Company Name", "Product 2 by Company Name", and "Product 3 by Company Name", do I then trademark each of these 3 phrases? Many thanks."
    • Michael Simonetti Said :
      "Hi Mel. Yes you need to trademark any brand you would like to protect commercially, so Product 1,2,3… etc will need their own trademark applications. It helps to do your own personal searching before you trademark to ensure no-one has the same name in Australia, and potentially overseas as well, depending on your commercial strategy."
  4. Shaun Said :
    "Hi, thanks for the great article, I have a question, say I have a brand "the fitness machine" and I have since noticed someone else has a TM "fitness machine", if I go ahead and request to register mine, will it likely get through, and yes it is the same product type and class."
    • Michael Simonetti Said :
      "If they have a prior filing or approved TM you'll not succeed in registering the same name. If they are operating in the same area you may face a name challenge - look out due that and plan ahead."
  5. Michael Wahhab Said :
    "Hi Michael I need to trademark a logo for a pop/rock music band. We have identified about 7 classes. Can you provide any advice on what to write on the actual application? It's a shame there isnt an example completed application anywhere online. I don't think we can afford a lawyer but if you can recommend someone inexpensive, that would be great."
    • Michael Simonetti Said :
      "Hi Micahel, Alas! lawyers charge corporate fees for anything business related, you can go this alone though as the main thing is picking the right classes and paying your fees."
  6. Jonalynn Versantis Said :
    "Hello Michael, this was a really great and very informative article. Really helped to simplify the process of trademarking. I've done a bit of research into my preferred brand name 'LUSTR.' Initially I'd like to make womens casual clothing, sportswear and accessories using this exact spelling. Now I've checked it's availability using a simple trademark search, it doesn't seem to be taken by anyone selling the same goods. What would be my options from here? Again, lovely article, kind regards!"
    • Michael Simonetti Said :
      "Hi Jonalynn, thanks for the feedback. I’d register the WORDMARK to protect your future business. Follow the steps above, there will be a little research required on the classes but you should navigate your way through without too much trouble. Good luck."
  7. Paul Said :
    "Michael My daughter is an international athlete who has her own website. She has a particular phrase that she is known by which she identities herself with and is on her website. She has also recently had a tattoo of this saying. Can I trademark this 3 word phrase and under what catergory/class would I apply for it under?"
  8. NICK Said :
    "Once i have registered a series of words, can anyone else use the same series of words and add another word at the beginning or end of the registered word."
    • Michael Simonetti Said :
      "Hi Nick - This all depends on the assessment of the Trademark however it seems like there should be reasonable protection around similar submissions."
  9. Elisa Said :
    "Hi, thanks for the article. I have an idea and a business name in mind whereby I can see a future franchise opportunity both nationally and perhaps internationally. I have not registered my business name as yet as there is a conflict on the asic site that states my business name is similar to another (although not exactly the same, 1 letter different). I have completed a trade mark search on the ip website and it is clear, no one has trade marked my proposed business name. So....my question is 1. Should I apply to have it trademarked now? 2. Once TM approved, then do I contact asic to obtain my business name registration and also the domain name? I have no intention of stopping the other name that is registered as it is one letter different and I will not be comepeting with their business nor will they be competing with me. 3. Are there any other avenues I need to look at in regards to future franchising? 4. I have a 'two word' name a motto which will go underneath this name with a logo/picture. The logo is not yet designed. Am I right in going ahead with the two word name now & getting that trademarked ASAP? 5. Can I add the phrase and logo at another time in the future, confused with above in regards to logo & phrases don't hold up as well as WORD trademarks? Or if I do it this way will I just end up with 2 trademarks? 6. If I apply and it is not approved do you lose the $500 (two categories) or is it refunded? 7. Will I have to start trading my business immediately after trademark is approved? If not within what timeframe please? Sorry for the long question, if there is anything else I'm leaving out, please let me know....all help welcome! Thank you, Elisa"
    • Michael Simonetti Said :
      "Hi Elisa The trademark system trumps all other challenges when marketing, so yes you can challenge ( you have to do this via legal channels ) others from infringing your trademark once obtained. You will need to seek legal advice beforehand. yes you'd loose the 500 if your trademark is not approved. I'd recommend registering a word mark first, not a logo it is more general."
  10. Siena Said :
    "Hi! Thanks for providing this very informative site. I was just wondering if I am wishing to trademark both a business name, and a logo in conjunction with this, is it possible to include/link them both in the same online application through the government IP site, or must I complete two separate applications? Just that the application form only seems to provide three options in registering the trademark- being a word/phrase, a stylised word/phrase, and a logo- not for a combination of two of these. Also, is it possible to trademark a business name that is already registered (in a different class- theirs being wine, ours being beef), if the other trademark expired last month? Thanks in advance!"
    • Michael Simonetti Said :
      "Hi Siena, you will need two individual applications and yes you can apply in a different class (this happens often, the same name owned by two different companies in different classes)."
  11. Elisha Said :
    "Hi Michael. What are your thoughts regarding whether to include your business name in addition to the label name in a trademark? For example, let's say my business name is Treely Estate and the new label for my product is going to be 'Verity' would you just trademark 'Verity' or would you trademark 'Treely Estate Verity'?"
    • Michael Simonetti Said :
      "Do a search on trademarks and see if Verity is already taken, if not in this case I think the simpler trademark is better. You should also trademark Treely Estate in this example separately as a company name offers little commercial protection."
  12. Anthony Said :
    "Great article and answered a lot of my questions. I am looking at reviving an old company name and did a search and realized that someone has applied for the wordmark a couple of months beforehand. If someone has registered a wordmark such as "Coca-Cola" can I register the logo and use it on my can of cool drink?"
    • Michael Simonetti Said :
      "Hi Anthony, likely no, the wordmarks are considered when graphic logos spell out the name clearly. Check they have resisted the name in the same industry / category, if so - time to think of another cool drink name."
  13. Vic Chen Said :
    "Hi Michael , i'm from Malaysia a country in south east asia, thanks for your article , and i search a lots of information through the internet about the Madrid system , may i know the Madrid system enough to protect our trademark ? We met a condition like this , we sold our products to a company located in Australia , and now we worried about they will sell their own products under our brands or trademark , may i know the Madrid system able to protect our trademark ? Or they can register the trademark in the other parties if we already register our trademark under the Madrid system?"
    • Michael Simonetti Said :
      "Hi Vic, The Madrid system is a service to register trademarks internationally, if you have selected Australia in the list of countries you have registered in and paid for, then your registration should appear in the ATMOSS search service here in Australia and then yes your trademark will be protected. If it does not yet appear in our national trademark registry, then I suggest you enquire or check your Madrid registration."
  14. Maria Said :
    "Great article Michael. We've had a business since 2014 - told a friend about it and he initially offered to buy our business, but then decided to use the same name, with the only difference 'Oz' instead of 'Australia' which is in our name. He is currently rebranding his entire existing business. We are looking to trademark our name to protect ourselves. We've been advised to register the trademark under the 'common' name in our business names and leave out 'Australia'. Do you think this is the right way to go about it, or should we use our exact business name as registered under ASIC. Thanks so much, Maria"
    • Michael Simonetti Said :
      "Hi Maria Do an ATMOSS search (google it or check this link : ) and ensure there are no competing trademarks, then either seek legal advice or proceed to register your Trademark. Good luck!"
  15. Lisa Said :
    "Hi Just wondering someone has registered my business name as a trademark, in a different classes to what I was requiring, i was thinking of changing the "for" to "4" do you think this would be sufficient to get past the trademark. Also there name does not have a "s" at the end so would I stand any chance of using my current name in different classes"
    • Michael Simonetti Said :
      "Hi Lisa, if in your class there is another name exactly the same, likely the 4 or 'for' will not help if the other party contests the name, so be careful with that one. Good luck!"
  16. Adam Said :
    "Hi, Nice article. I have a business name and logo and a brand and a logo. I will register them both following your instructions above. If I register the brand name for a certain type of class, and I want to add the brand name for other products from a different class, can I apply to add them on later? Thanks, Adam"
    • Michael Simonetti Said :
      "Hi Adam, Yes you can apply to add classes to your trademark in australia and if at that point you have grown beyond our shores internationally also. Be mindful though, if you miss a class now it leaves it open for another organisation to register in the interim, so try and be as wide in your coverage now relative to a reasonable cost to you."
  17. Ryner Said :
    "Hello, how do the trademark laws apply for websites? We have a new travel magazine that we wanted to trademark, and have put in the trademark application for 3 different classes (for the magazine publication itself as well as the associated website.) I noticed that there is another lady living in another country who is running a Facebook page and travel website/blog with the identical name as ours though she has not trademarked the name yet. If our application is approved, does that mean we can ask her to change/remove her website as it will be using our trademarked name?"
    • Michael Simonetti Said :
      "Hi Ryner, yes it does. If you're approved for a trademark, especially as a 'wordmark' you have rights over that name and it is considered more important than a business name or a PTY LTD name in Australia. Basically if you own the trademark in Australia, you can request they change their trading name. It may take some convincing legally though, so i'd approach it (once approved) softly at first to see if you can get a cost-effective outcome."
  18. Karen Said :
    "Hi Great info, can I ask is it best to get this trademark before setting up a website?? thanks."
    • Michael Simonetti Said :
      "Hi Karen - Trademarks are best setup for any business where the brand will be a significant part of the business in the future. If it is a small business or you are not concerned that you may need to change your trading name in the future, you may not need to worry about a trademark. However if you are interested in building a large, well known brand, then protect your name and logo with a trademark as soon as possible."
  19. Jim Said :
    "Hi Michael for your useful post. I am applying for a word mark via ipaustralia under class 43, which is food and drink provider. We will try to launch our packaged food brand at some point in the future. We don't want to buy class 30 for this group yet due to cost concern. I see a very close link between these two classes and am wondering if we are protected from brand infringements in packaged food (class 30) on the basis that we also sell our packaged food directly to public? Thanks for your advise"
    • Michael Simonetti Said :
      "Hi Jim - you are only protected if you successfully register each class you are planning to trade in. I understand it is more expensive to register multiple trademark classes, however it should be considered a relatively small investment to protect your brand in the future. Good luck."
  20. Mitchell Said :
    "Hi well explauned post. I have a really good business name and I want to allow my friend to come under the same name in the automotive industry and combine our buisnesses but still retain individual abn and buisness accounts .. hoes the best way to go about this"
    • Michael Simonetti Said :
      "Hi Mitchell, to trade under the same name, simply use the business name to register two separate bank accounts and then you can both independently invoice clients. You can also use the trading as name so you both work under the same brand and invoice from your personal or totally different names. Good luck, and I suggest drawing up an agreement over who owns the brandname before you begin."
  21. Aj Said :
    "Hi If you want to trademark a name and eventually an associated logo but have not yet designed the logo what is the best way to get started? Thank you."
    • Michael Simonetti Said :
      "Hi Aj - I recommend you register a WORDMARK - it is a word without a logo design, which will provide strong protection for your business. (actually provides far more protection that registering a business name or Pty Ltd company name)."
  22. Madeline Radin Said :
    "This was a much easier read than the other websites. I want to search the business name I would like to have Trademarked however the search engine only allows me to write 2 words for the business name when mine has 3? And if I apply to have my business name trademarked and it is denied do I still pay the full fees? Thank, Maddy"
    • Michael Simonetti Said :
      "Hi Maddy - annoying that their form only allows 2 words and you have 3 - I'd proceed with the full registration as it sounds like you'll have a unique version, that way you are well on the path to securing your trademark. If you have trouble with the registration, contact IP Australia (I suggest calling it will be faster) you'll find their details on the links above. Good luck"
  23. Bhatt Said :
    "How to trademark a business name so no one can use that word for making money eg they can not use Business Guru in any internet search engine or advertisements ?"
    • Michael Simonetti Said :
      "Hi Bhatt, You can only do this if you hold the registered trademark in the regions or countries you want to restrict the use. Then you may contact the other organisations letting them know you own the trademark and to cease use or pursue legal avenues if it continues."
  24. Ali Said :
    "Hi! My headstart application returned a negative outcome due to a word "likely to be required for use by other service providers". If I altered its spelling or remove the space between the two words would this mean it is no longer a common word?"
    • Michael Simonetti Said :
      "Hi Ali, it is always difficult to trademark common names and words, try something a little more unique. Good luck"
  25. Raz Said :
    "I have a blog that I eventually plan on monetizing. Is it worth trademarking the name of the blog?"
    • Michael Said :
      "Hi Raz, yes it is good business practice to register the trademark as early as possible, this will keep you from heartache if the blog takes off and protects your name - to keep the costs down, you can follow the instructions on our site to register the trademark as a name or logo yourself."
  26. Margie Said :
    "Hi, we operate tourist parks in remote regions and have just acquired a new park. There is one other park in town that has a completely different trading name but use various other names (similar to our just registered business name) on their website, advertising and so forth to 'cover all bases'. More than anything it confuses the traveller, who most of the time have a clear idea of where they want to stay. If we trademark our registered business name, will that enable us to prevent the competition from using it on their website, signs, advertising etc? Any advice would be welcome, we have not encountered this situation before, I guess because we operate in pretty remote places! Margie"
    • Michael Said :
      "Hi Margie, A trademark is the strongest protection you can have for a business brand. If you had the trademark, you can force your competitors not to use the same name. The point of this is exactly to solve your issue - so people are not confused about one place or another (or one product or another). The only tricky part, while you wait for your trademark, it can be contested, then it may come down to who used the name, marketed the name first. I would follow the instructions on our site and register the name as a text word ASAP and in as many categories that could apply to your trademark - these are all easily found on the governments trademark website (the link is on our site too). It would also be worth checking your situation with a lawyer to confirm your case and competitors can be easily stopped using the name in the future (once you have the trademark). And just in case - stay clear of asking your competitor nicely to change their name until you have the trademark. Good luck"
  27. Nicholas (Trademarkify) Said :
    "Hello Lee, When your trademark application is examined, the examiner only looks at the trademark register to determine whether a conflict exists. In this regard, if the other business owners haven’t bothered to register their trademark for SPARKLE, then their tough luck, your trademark will be accepted. However, if they happen to read the trademarks journal (which most people don’t), and notice the acceptance of your application, they can oppose your trademark application on the basis of their prior use within the two-month opposition window. Although, in practice, this is unlikely to happen. The biggest disadvantage however, is that if they subsequently file their own trademark applications, because your trademark application was filed first, your trademark application would stand in their way, however, they can circumvent this by showing evidence of their prior use of the trademark in the market place prior to the filing date of your trademark application. In this way, both you and they could end up with a registered trademark, each having a legitimate right to use the trademark in the marketplace. Now, for your proposed trademark application, because the word “sparkle” is more distinctive then the descriptive words such as “natural”, “products” and the like, if there is an earlier trademark on the register having just the word “sparkle” it would probably be cited against your trademark application even if you do apply for SPARKLE – ALL NATURAL PRODUCTS. In other words, the examiners “ignore” the descriptive words and focus on the distinctive words. Also, generally, when filing a trademark application, it is highly advisable that you omit the descriptive words anyways, as these do not add much to your application and arguably limit the scope of your protection. Also, bear in mind that the classes are used as a guide only. If you find an earlier trademark application within the same (or cross/associated class) you must then inspect the nominated goods and services within each class and decide whether your goods and services sold in the same trade channels as those other goods and services. If so, then there is a conflict, if not then there isn’t."
  28. Lee Said :
    "Thanks for your prompt reply. Nope, not what I wanted to hear!! But thanks for that. I am going to reassess everything. Ta."
  29. Lee Said :
    "Hello Hoping someone could offer a little advice please. I want to trademark the name SPARKLE for my business, making handmade candles, soaps, lotions, lip balms, etc. There are similar businesses that use SPARKLE - but none have trademarked. I would have to use class 3 and 4. In one of these classes, SPARKLE is taken as a WORD logo. So, I am looking at a trademark logo that reads SPARKLE - ALL NATURAL PRODUCTS. Can I please ask for your opinion on whether or not this would be plausible - especially with the word 'natural'? Thanks."
    • Michael Said :
      "Possible, but you may have trouble with the Wordmark already registered... To be safe, our advice, although probably not what you want to hear, is choose a name you can own outright."
  30. Nicholas (Trademarkify) Said :
    "Hello Sarah, Yes, your class sounds correct. If anyone else is interested, the official tool for picking classes can be found here: http:// pericles.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml (copy and paste it please) As a general note Sarah, try and go broader than simply pre-schooling. For example, in class 41, there is also "Education services" which will cover other types of schooling also. The general rule when nominating goods and services for a trademark is choose those goods and services for which the trademark is currently being used (if applicable) and those goods and services for which you intend to use the trademark in respect of within the next five years. The reason for the latter time period is that if you nominate goods and services, and a third party, at any time from five years from the registration of your trademark, believes that you haven't been using the trademark in respect of all goods and services, they can request the removal of your trademark for non-use. If you have any further questions you can give me a yell at Trademarkify - I'm always happy to help."
    • Michael Said :
      "Thanks Nicholas - that link is http:// pericles.ipaustralia.gov.au/tmgns/facelets/tmgoods.xhtml"
  31. Sarah Said :
    "Hello Andmine thank you for the quick reply. Nice pun ;) I couldn't see any others that apply except maybe preschool education? Does this mean I should pick all that I think might apply? Is there anyone I can make an appointment with to run me through this properly? For example to do my tax I go to see an accountant Who would I go to see to set up my trademark? Also I am meeting with a graphic designer to design my logo should I wait until thats complete and then register my name? Thank you so much! Will be directing any fellow friends to your website! Sarah"
  32. Sarah Said :
    "I want to register a trademark to reserve my name for a business i want to open in the future (a preschool) Does that mean that the class would be Preschools (education) (BP) Thank you in advance :) Sarah"
    • Michael Said :
      "Hi Sarah, It does sound like the right 'class' (excuse both our puns), however check through the entire list of classes to see if any others are relevant, you should have protection in all that apply directly to be certain no future issues will arise after full registration approval."
  33. Simon Said :
    "I want to trade mark The Roof Guys, 2 other sole traders are currently using this name and I can't register it as a business name. If i trademark the name would i get legal rights to all other registrations. What is the average cost to register a trade name. thank you"
    • Michael Said :
      "You can try register it as a TradeMark, which may, if successful give you the rights to STOP them using the trademark. However seek legal advice in this case as sometimes trading history is taken into account when you try and STOP another company infringing on your newly acquired registered trademark. You can register yourself for a few hundred dollars, or seek legal advice and pay maybe another grand or two. They may advise you it isn't worth seeking the trademark and to apply for something else to build your brand on. If there is already confusion in the marketplace on who owns the name... this would be my advice - start a new catchy brand you can own... perhaps the The Real Roof Blokes ..."
  34. Rhiannon Said :
    "I have started a travel website selling hotel stays flights ect with various providers... I have called it scoot getaways and have a logo. I was informed today by a friend that scoot is registered by an airline company that operates out of Asia into Australia... Would the provisions still allow us to keep our name??? They are both in the same class Thanks"
    • Michael Said :
      "It sounds like your business name is Scoot Getaways. I'd apply for a trademark for this in logo form and ensure you have the word getaways in the logo. This will give you the best chance of approval in the same trademark class. Be mindful that long term investment in a brand you cannot own isn't a good business practice as you will build brand awareness and then have to change your name. It is best this is done as early as possible if needed."
  35. Danielle Said :
    "Hi, I'm interested in knowing if I can use a name that is trademarked as part of the name of my product. Say for example 'Sugar' is trademarked and I wish to call my business 'Sugar Melbourne'. The one I am looking at has trademarked 'Sugar' for the same class as my product. What can come of this? Thanks :)"
    • Michael Said :
      "Hi Danielle, You can still use the name as there are provisions in the trademark laws which allow variations. However I'd recommend strongly registering the trademark just in case."
  36. Nicholas Said :
    "Hello Kylie, The general rule is that one cannot register trademarks that could be considered as being descriptive of the nominated goods and services. For example, during examination, the examiner will decide whether or not other traders would have a legitimate right to use those words to describe their goods and services in the normal course of trade, and if so, object to your application. Having said that, you can register "common" or descriptive wording as long as those words are not normally associated with the nominated goods and services. The exception to the general rule of course is extensive prior use. In this regard, if you have been using the trademark extensively (such as more than 3 years), it could be said to have acquired distinctiveness. Note that one would need to submit evidence of the prior use to the examiner to have the application accepted which is a bit of work."
    • Michael Said :
      "Thanks Nicholas, your input, as always is very much appreciated."
  37. Kylie Said :
    "Can you trademark a common name like Kylie? The reason I ask is that I have recently discovered that there is a Kylie (TM) on a line of sanitary bedlinen. Was really weird. I thought using personal names like Kylie it had to be unique or distinctive. Kylie is a rather common name held by many."
    • Michael Said :
      "Hi Kylie, you can trademark common names although I'm sure the criteria and process is a little more rigorous than an un-common name, eg. trading history and brand-mark considerations vs. just the text 'KYLIE'. Also depends on the assessor(s). Think of PETERS (Ice Cream), very common name but also a registered trademark."
  38. Nicholas Said :
    "Great post, it explains the trademark process in easy to follow logical steps. I’m a registered Australian trade mark attorney from Trademarkify (trademarkify.com.au), and have some additional points to make: Firstly, and especially if your trademark is a word trademark, make sure your trademark is not descriptive of the good and services. For example, if you file a trademark for ‘Golden Bread’ (a mere laudatory term) for bread in class 30, the examiner will say that, because there is a legitimate right for other bakers to use the term golden in describing their bread, the trademark is too descriptive (i.e. incapable of distinguishing the bread from bread of other bakers) and will raise an objection. In certain circumstances if may be possible to overcome such an objection by showing (by way of evidence) your prior extensive use of the trademark, but such is usually a time consuming process, and the rule of thumb is you may have to show about three years of prior use. As such, make sure your trademark is “suggestive”, rather than descriptive (a subtle but important difference). If you are set on a descriptive trademark, then generally you could maybe pursue a logo/design application, which, assuming the logo is more than stylised text and comprises a distinctive “device” within the logo, the distinctive device is generally enough to make the trademark capable of distinguishing. Bear in mind that these trademarks generally have narrow scope of protection. Secondly, yes, as the post alludes to, the filing date of a trademark application is important, but not as important as the actual date of first use of the trademark in the market. As such, if someone has already registered a trademark, you may be able to get yours registered by showing prior use of the trademark in Australia. There are a few things that are important: 1) the use of the trade mark must be in Australia, 2) the use of the trademark must be used as a trademark (i.e. it must actually have been used to distinguish your goods and services from other traders in the market – a domain or business registration is not enough), 3) the use must have been before the filing date of the conflicting trademark, 4) the use need not be extensive and 5) the use must have been continuous up until the filing date of your trademark application. Also, on the flipside, you may have a defence to trademark infringement of you can show your prior use of the trademark. Many of our clients have been sent very threatening letters from attorneys asserting trademark infringement of a registered trademark, wherein, we have been able to successfully defend their businesses by showing their prior common law (i.e unregistered) use of the trademark (using s124 of the trade marks act). Even if you cannot show prior use, there may be other legal avenues we could pursue, such as honest concurrent use or other circumstances. If you ever find yourself in the unfortunate position of being threatened of trademark infringement, please please make contact with us so investigate all options for the resolution of the matter. Nicholas"
    • Michael Said :
      "Thanks Nicholas, great reply. We will be recommending your services including your trademark website - (trademarkify.com.au)"

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