Step 1. Determine who owns the trade mark
A trade mark can be owned by:
- One or more individuals
- An incorporated company
- The trustee(s) of a trust
- A political body
- A State, Territory or Commonwealth government entity.
To help avoid issues down the track, it's important to list the owner of the trade mark correctly.
Who can be listed as the owner of a trade mark?
The owner you list in your application needs to have legal personality. This is any person or entity that has rights and duties in law and can undertake legal actions.
This includes, but isn’t limited to:
- Entering contracts
- Owning property
- Suing or being sued.
An entity with legal personality can be:
- An individual
- A company
- An organisation.
For example, Jane owns Jane’s Car Sales Pty Ltd. Her business is registered as a company and is therefore considered to be a separate legal entity. This means her company has the same rights as a natural person and can incur debt, sue and be sued.
Who can’t apply?
The following entities can’t apply for a trade mark because they don’t have legal personality.
- Business names — the trade mark is owned by the business owner(s), not the business.
- Trusts — the trade mark is owned by the trustee(s), not the trust
- Partnerships — the trade mark is owned by the individuals who make up the partnership
- Other bodies — such as clubs, associations and societies, can only own a certain type of trade mark called a collective trade mark.
For example, Amazing Windows is a business name and therefore, can’t apply for a trade mark, but the owner of Amazing Windows, John, can.
Why it’s important to capture ownership correctly
If there’s any ambiguity regarding ownership of the trade mark, this can be used to undermine or overturn your trade mark rights.
How to list trade mark owners
Depending on the type of owner, you’ll need to list the:
- Individual names — write down the legal names of private individuals in full. Make sure to include first and last names (middle names are optional)
- Full company name — include all its legal identifiers, such as ACN, ABN, PTY LTD, Limited
- The name of the trustee(s) — write down the legal name of the trustee(s). You can specify that the owner is intended as trustee to a trust. For example, John Smith, as trustee for Smith Trust.
Common mistakes to avoid
Your ABN or ACN details are misaligned or inconsistent
If you’re supplying an Australian business number (ABN) or an Australian company number (ACN), make sure it points to the same legal entity as the owner you’ve listed. For example, you can’t apply under an individual name and attach an ABN or ACN details for a company.
Typographical errors or spelling mistakes
If there’s a typographical error or spelling mistake in the name you’ve listed as the owner, this can be very hard to rectify once you’ve applied for your trade mark.
For example, your business is COMPANY PTY LTD, but you accidentally list the owner as COMMPANY PTY LTD on your application.
This is technically a different legal entity and from a legal perspective, you’re not the owner listed on the application. Providing acceptable documentation, such as transferring ownership to the correct name, can be difficult if the misspelled entity doesn’t legally exist to sign the transfer documentation in the first place.
Step 2. Check you're eligible
To apply for a trade mark, you must:
- Reside (or have an agent that resides) in Australia or New Zealand, and
- Intend to use the trade mark for the goods and/or services in your application.
Before you get started, it's important you understand what a trade mark is.
Step 3. Do your research
To avoid costly mistakes, make sure you:
- Know the type of trade mark you're applying for
- Understand which class(es) of goods and services to include in your application
- Search existing trade marks to check your idea (or similar) hasn't already been registered.
Step 4. Choose an application service
We offer different application services to suit different needs. Explore the application options below:
Total cost: starts at $330
- Anyone who's new to filing a trade mark application
- Receive feedback from an examiner before you file your application so you can quickly understand if your trade mark is valid, and fix any errors
- After receiving feedback, you have five business days to submit changes (or formalise your application)
- If your application is successful, your trade mark will be in effect from the date you formalise your application.
Total cost: starting at $250
- Customers who are comfortable with filing trade mark applications
- IP professionals filing small volumes of applications.
- Only allows minor changes to your application once it's submitted
- If your trade mark is successful, you're protected from the day you filed your application.
Step 5. Gather your documentation
You'll need the following:
- Ownership and contact details (including postal address)
- A representation of your trade mark (e.g. an image of your logo or recording of your sound)
- A list of the goods and/or services your trade mark applies to and the related class number(s)
- Payment details.
Step 6. File your application
To lodge your application:
- Create an account with our online services
- Fill out your application form. This should only take 15 minutes, and you can save your progress as you go.
Step 7. See the outcome
It usually takes three to four months for your trade mark application to be examined. We'll let you know the outcome via your online services inbox. If your application is successful, the following happens:
- Your trade mark gets published for two months on the Australian Official Journal of Trade Marks and the Australian Trade Mark Search
- Anyone can oppose your trade mark during this time
- If nobody opposes your trade mark, or you overturn these oppositions, your trade mark application will be successful.