An Applicant can register a trademark in respect of goods, services, or both goods and services S19(1).   A flowchart setting out the registration process is found within the Act, however is set out here.

An Application must be lodged at the Trade Marks office in accordance with the Trade Mark Regulations 1995 (Cth). The form in which the Application is to be lodged is prescribed in  s27(2).

The Application must include a representation or a concise and accurate description of the trade mark where the trade mark consists of a colour, scent, sound, shape or aspect of packaging. r4.37.  As a graphical representation is required, and a suitable form of graphical representation needs to be found.

The main elements, feature and scope of the trade mark claimed must be clear to the public,  the Examiner, the public and be searchable.  With respect to a sound recording,  a recording or CD may be appropriate,  a three dimensional shape mark, a  3D perspective or isometric drawing  in addition to a sample, ensuring that the drawing shows all features of the shape, with solid lines highlighting the claimed parts, the unclaimed parts remaining in unbroken lines.

The description of the trade mark will be entered as an endorsement accompanied by the graphical representation which will help define the boundaries of the trade mark claimed.  There are provisions with respect to the appropriate dimensions of the depiction,  although the critical consideration is that the application show all of the features of the trade mark clearly.  It  is critical to ensure that the description clearly delineates the scope of the trade mark.

Specification of the goods and/or services

The Applicant must specify the goods and/or services in respect of which they seek registration of the mark, in conformance with the prescribed regulations (r4.4)  grouped by reference to the classification system for trademarks in the Regulations.  

This classification system contained in Schedule 1 of the Regulations  derives from the Nice Agreement,  an International arrangement to which  Australia has acceded.  A class number must be nominated for each group of goods or services,  and where more than one,  the classes grouped together according to class and listed in ascending order of class number.

Where the Applicant can’t describe the goods and/or services according to the Nice Classification,  adequate information must be given as to the nature of the goods/services to enable the Examiner to allocate them to a class.  S32 of the Act gives the Registrar the power to determine questions relating to the appropriate class goods or services should be comprised within in the event of a disputed classification,  except with respect to Madrid Protocol  Applications.   Multi-class applications will be checked by the Examiner to ensure that the goods/services grouped into each nominated class are properly classified.

If  there are misclassifications detected by the Examiner,  they will be specified in their first report, and the applicant will need to decide whether they wish to delete them or pay additional fees to add them  to another class.  There are 45 classes and the system is used by Examiners conducting searches for the purposes of locating marks which may conflict with the applicant’s marks under S44.    However the Examiners’ searches won’t be confined to the specified classes but extend to other classes in respect of related goods and services.

The Trademarks Examiner will determine whether there are any grounds for objection of the trade mark. S31.  For this reason,  it is  recommended at a minimum that a search be conducted of the IP Australia Online Trademarks Database, including cross searches,  as well as the ASIC  database of company and business names.  Research should ideally be more broadly conducted to ascertain the existence of any unregistered trademarks similar to the trademark you are contemplating using.    Searches can by conducted using NICE terms,  but bear in mind that changes can be made to the NICE classifications when trying to locate potentially conflicting trade marks.  This is another good reason  to search across classes.   A pending or registered trade mark with an incorrect specification or class number may not be found when conducting a trade mark search for conflicting marks on the ATMOSS database.

The Applicant has the onus of ensuring classifications are not vague, non-descript or overly broad,  particularly where this results in an application which defies classification.  There are IP Australia Determinations to assist with difficult to classify items.

 The Application may be be rejected with grounds,  direct amendments, or the Examiner may accept the application subject to conditions or limitations.  Conditions aren’t  defined in the Act, but the power to impose limitations on registration refers to the power to impose limitations as to the manner of use,  or use within a particular territorial area of Australia or in relation to goods or services intended for export S6.  An appropriate endorsement will be entered into the Register to clarify the scope of the restriction imposed. Under S33(1)  an Application must be accepted unless it hasn’t been made in accordance with the Act or there are grounds for rejection.

Grounds for rejection of a trademark are set out in S39, S40, S41, S42 and S43 of the Act. A trademark cannot be rejected without giving the Applicant the opportunity to be heard. S33(4)

Where the Application proceeds to registration it is then advertised in the Official Journal of Trademarks. S34

Except in the case of International or Convention Applications the relevant date for the purposes of registration is the filing date S72(1) which serves as the ‘priority date’ for the trademark.