Registering Trademarks In Australia: What You Need To Know

A Practical Guide to Trademark Registration in Australia: Protecting Your Brand Down Under

This is the first post in a new series exploring trademark registration around the world. We're starting with Australia—not just because it's a key global market, but because our firm has deep experience there. Our Sydney-based colleague, Mathew Alderson, is a veteran IP lawyer with over three decades of experience, having represented multiple major U.S. film studios on intellectual property matters.

So, if you're looking to protect your brand in Australia, here's what you need to know.

What Can Be Registered as a Trademark in Australia?

Australia's trademark system is modern and flexible. According to IP Australia, the national intellectual property office, a trademark can include a wide range of signs, such as:

• Words: Company names, product names, slogans
• Shapes: Distinctive product packaging or designs
• Images: Logos, illustrations
• Sounds: Jingles, unique audio signatures
• Colors: A specific color used in a distinctive way for your goods or services
• Moving images: Short animations or video clips
• Aspects of packaging: Unique packaging features
• Any combination of the above

Most trademarks combine elements—like a stylized logo containing both text and image.

What Cannot Be Registered as an Australian Trademark?

Despite its broad scope, the system does have limitations. A trademark is unlikely to be registered if it is:

• Non-distinctive: Generic or descriptive terms (e.g., "tasty" for beer) that other businesses also need to use
• A geographic name: Unless it has acquired distinctiveness through long-term, exclusive use
• A common surname: Typically not distinctive without significant secondary meaning
• Misleading or deceptive: A mark that falsely suggests the nature, origin, or quality of the goods
• Scandalous or offensive: Contrary to law or public morality
• Prohibited by law: Including national flags or restricted terms like "bank" or "university," unless specially authorized

Filing Across Multiple Classes

Australia allows multi-class trademark applications, which means you can apply for protection across multiple categories of goods and services in one filing. This streamlines the process, but keep in mind that government fees apply per class.

Step-by-Step: The Australian Trademark Process

1. Pre-Filing Search

Use IP Australia's database to check for existing marks. A professional clearance search can identify similar marks and reduce the risk of objection.

2. Application Submission

File online with IP Australia, specifying the relevant classes and goods/services. Use IP Australia's pre-approved terms for smoother processing, or carefully draft a custom list.

3. Examination

IP Australia will examine your application to ensure compliance with the Trade Marks Act. If issues arise, you'll receive an examination report. You'll then have 15 months to respond.

4. Publication and Opposition

If accepted, your application is published for a two-month opposition period. Third parties can oppose if they believe the mark conflicts with their rights.

5. Registration

If no opposition is filed—or if opposition is resolved in your favor—your mark will be registered.

Common Australia Trademark Filing Mistakes

We regularly see otherwise strong applications stumble due to:

• Attempts to register marks that are not inherently adapted to distinguish your goods or services
• Failure to use a US filing date as the priority date for your Australian application
• Poorly described goods/services: Too broad or too narrow, often causing delays
• Incomplete clearance searches: Similar-looking or sounding marks can trigger objections
• Conflicting design elements: Even if your wording is fine, your logo might pose issues
• Wrong applicant entity: The applicant must match your legal business entity exactly
• Failure to ascertain whether the mark is a series or certification mark. A series mark is one of multiple marks with the same main identifying feature, and a certification mark requires the imprimatur of a trade association or standards organization.
• Improper use of ®:

IP Australia Trademark Registration Timeline

After filing for an Australia trademark, the following usually occurs.

• IP Australia will examine your application: They will assess whether your logo meets the requirements for trademark registration.
• IP Australia will notify you of the outcome: You'll receive a notice of acceptance or an adverse examination report.
• If accepted, your trademark will be advertised: This allows for objections to be raised before registration.
• If registered, you'll receive a trademark certificate: This provides you with legal rights to your trademark. applications.

A two-month advertising period follows successful examination. Trademark registration in Australia takes a minimum of seven and a half months, even for smooth applications. This delay is due in part to international treaty obligations that prevent registration any sooner than seven and a half months from the filing (priority) date

If your application receives an adverse examination report, you'll have up to 15 months to respond. Objections or oppositions can extend the timeline significantly—sometimes past a year.

If You Receive an Adverse Examination Report

Don't panic. Most objections are resolvable.

• Read the report carefully
• You typically have 15 months to respond
• Earlier responses may result in faster resolution
• Common objections include descriptiveness, confusing similarity, and use of prohibited matter

Your options include:

• Submitting legal arguments to overcome the objection
• Narrowing your goods/services
• Seeking consent from owners of cited marks
• Providing evidence of acquired distinctiveness

Professional help improves success rates considerably, especially for objections based on similarity to existing marks or lack of inherent distinctiveness.

Official Fees (as of 2025)

Fees are per class and subject to change. Currency estimates reflect exchange rates at time of writing.

Trademark Use Requirements

Australia has no requirement to use your trademark before filing or registration. However:

• A trademark can be removed if it hasn't been used for three continuous years, starting five years after the filing date
• No use declaration is needed at renewal
• Continuous use is important to defend against cancellation or infringement challenges

Registering Non-English or Non-Roman Character Marks

You can register trademarks that use non-English or non-Roman characters (e.g., Chinese, Arabic, Cyrillic), but you must provide:

• An English translation
• A phonetic transliteration

Example:

大熊猫 → da xiong mao (transliteration), "giant panda" (translation)

These disclosures help examiners evaluate distinctiveness and avoid confusion with existing marks.

" and ® Symbols: What They Mean and How to Use Them

" – Trademark (Unregistered)

• Can be used even before registration
• Indicates your intent to claim rights
• Optional, but advisable

® – Registered Trademark

• Use only once your mark is officially registered in Australia
• Serves as public notice of exclusive rights

Both symbols are typically placed in superscript to the upper right of the mark (e.g., Giant Panda®).

Only use ® with the exact mark as registered—not for variations or components that are not individually registered.

Australian Customs Recordation

Once your trademark is registered by IP Australia, you can record it with Australian Customs, for protection against counterfeit imports.

Final Thoughts

Australia offers a sophisticated and user-friendly trademark registration system that provides strong protection to brand owners. But registration is just the first step. Long-term protection requires:

• Consistent and genuine use of the mark
• Monitoring for infringement
• Keeping your filings and renewals up to date
• Strategic legal guidance when objections or conflicts arise

We'll be using this same format for upcoming posts on trademark registration in other key jurisdictions. If there's a particular country you'd like us to prioritize, please feel free to email me and let me know. And if you're considering trademark registration in Australia—or anywhere else—our global IP team is here to help. Contact us for a consultation or stay tuned as our series continues.

Registering Trademarks In Australia: What You Need To Know

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.