Do I Need A Trade Mark For My Business?

We all vaguely know what a trade mark is but do you know what exactly you should be trade marking or if you need one at all? What does the term actually mean legally? Everything you need to know about trade marks is below – from trade mark lawyer, Casey Robinson of M A Legal.

What is a trade mark?

A trade mark (or mark) is a crucial element of the brand identity of a business. A trade mark can be a unique logo, phrase, word, letter, colour, sound, smell, picture, movement, aspect of packaging or any combination of these that identifies and distinguishes the source of goods or services of your business from those of others in trade.

In Australia trade mark rights can be registered or unregistered (with rights acquired through use), but a registered trade mark provides stronger protection and immediately enforceable rights against third parties who may be infringing on your intellectual property rights. Also, anyone can search the public trade mark register – so having a registered trade mark puts others on notice of your established rights just by its existence on the register.

It is important to note that when you register a trade mark, you do not obtain protection of that mark for any and every type of good or service. You need to select nominated goods and services across 45 distinct classes that are strictly categorised by IP Australia under international conventions.

Why trade marks might be essential for my business?

In Australia trade mark rights are acquired from the date of first public use of your trade mark in connection with your goods and/or services. You can seek to register any trade mark that is unique to your business.

When building a brand, you should consider registering a trade mark for your business name, logos, slogans, product names, unique design elements, sounds, colours, characters, and digital assets. Although these options are broad ranging, businesses should seek to register their business name and any logos as trade marks at a minimum. These elements are crucial to your brand identity and can be protected from misuse by others, helping to ensure your brand stands out and remains unique in the marketplace, and that consumers do not confuse your business with that of others.

It is also vital that you have adequate protection over your business’s intellectual property in the event that you wish to sell your business one day, as any diligent purchaser will expect that you have adequate registered protection over any trade marks used in the business, and that these registered rights will be assigned along with goodwill in the brand.

How to Register a Trade Mark in Australia?

While it is strongly recommended that you engage an experienced trade mark lawyer or attorney to assist you with filing and registering a trade mark in Australia (to ensure all legal requirements are met) anyone can file a trade mark application through the IP Australia online portal following the steps below.

Step 1: Pre-Application: Conduct a Trade Mark Search

  • First you must understand the type of trade mark you want to register, as well as the goods and services you need to cover. You can use the IP Australia Trade Mark Search tool to check if your proposed trade mark is already registered for goods or services the same or similar to yours. This step is crucial to avoid potential legal conflicts and to confirm the mark’s availability for registration.

Step 2: Submit Your Application

  • Prepare and File: Provide details of the applicant, a clear representation of the trade mark, and identify the relevant classes of goods and services to be covered in the application. Submit your application online via the IP Australia website and pay the associated fees.
  • Initial Examination: IP Australia will review your application. If it meets legal requirements, it will be published in the Australian Official Journal of Trade Marks for public viewing and potential opposition. If it doesn’t, you will be issued an examination report addressing any issues with your application, and given 15 months to respond and overcome the issues raised.

Step 3: Final Approval and Registration

  • Opposition Period: Following acceptance of your trade mark, there is a two-month period where third parties can oppose your trade mark. If no opposition arises, or if resolved in your favor, your trade mark will be registered with the deemed registration date backdated to the date of filing.
  • Certificate and Renewal: You will receive a certificate of registration, granting you exclusive rights for 10 years, renewable every 10 years.

What happens if I want to trade mark something that’s already been taken?

It is important that you conduct thorough trade mark register and marketplace searches before commencing public use of a trade mark, to ensure your trade mark does not infringe the earlier rights of other traders. There are very specific searches that should be conducted, with the results to be assessed according to current principles of trade mark law, so it is always best to engage an experienced lawyer or trade mark attorney to assist with this process.

There are also specific thresholds around the use of trade marks that must be met to retain registered trade mark rights, so the mere existence of a trade mark registration may not necessarily mean that the trade mark is unavailable to you. An experienced professional will be able to assess this for you and advise as to your options, which may include seeking to cancel a third party’s registered trade mark for non-use.

However, as a first step you can always conduct some brief marketplace searches online and of the trade mark register before engaging lawyers, in case the branding element you are seeking to use or register is very clearly unavailable (for example NIKE for sportswear).

If you do use a trade mark that is deceptively similar to that of another trader (registered or unregistered) on the same or similar goods and services, that trader may take legal action against you. This can result in cease and desist orders, infringement proceedings and other legal actions, which may have significant financial penalties. In addition, you may be forced to rebrand which can be very costly and time consuming, and not to mention cause damage to the reputation and credibility of your business (which is exactly what a trade mark aims to protect!).

What happens if I have trade marked something and find a competitor breaching that?

If you have a registered trade mark and find someone breaching that right in connection with goods and/or services similar to yours, you should speak to an experienced lawyer or trade mark attorney to assist in the proper enforcement of your rights. An experienced professional will be able to assess whether there is an unlawful breach of your rights on the facts and advise and assist you in approaching the infringing competitor in the correct way and in line with current trade mark laws. You may be able to force the competitor to rebrand and recover financial compensation from them, depending on the circumstances of their use and your damage.

If I want to trade mark something, how do I go about it?

Trade marks are quite technical and it is important that you file your trade mark correctly when applying for registration. Trade marks filed incorrectly can be fatally flawed and often this is unable to be remedied and can create significant (and unnecessary) risks to your business. You should always seek professional legal advice from a lawyer or trade mark attorney to ensure you are properly protecting the intellectual property of your business, and to ensure you are not infringing the intellectual property rights of others.

How much does it cost? Do I have to renew a trade mark?

The cost to register a trade mark is largely dependent on the number of classes covered by the registration. If you engage a lawyer or trade mark attorney to assist you, they will generally charge a fixed fee for advising you and assisting with the application process.

Acceptance of an application for a trade mark is not automatic – there is an examination process which takes place, whereby a trade mark examiner will assess your application in the context of current trade mark laws and practice, and also by comparing your trade mark to those already registered by other traders for the same or similar goods and/or services. If a trade mark examiner raises any objections during this process, you will be given 15 months to overcome the issues raised in examination, before your application is formally rejected. A lawyer or trade mark attorney can advise and assist you throughout this process, providing strategies for overcoming any objections which may include the preparation of legal arguments, evidence of use, or negotiating with other trade mark owners for coexistence and consent.

Once successfully registered, a trade mark is protected for 10 years from the date of filing. As with filing, costs to renew a trade mark every 10 years are dependent on the number of classes you are wishing to renew.

Anything else about trade marks I should know about?

Beyond Australia, there are trade mark registers in each country and also an international trade mark system through the World Intellectual Property Organisation under the Madrid Protocol. If your business provides goods and/or services in other countries outside of Australia, you should also consider registering your trade mark in those countries. An experienced professional, such as a lawyer or trade mark attorney, will be able to advise and assist you with this, and work out the best options for protection based on your business needs.

If you are looking for a trade mark lawyer to assist you, or have any questions regarding any of the above, please contact our team and we will put you in touch with one our trusted trade mark experts.


In Australia, there are 8 main kinds of trade mark: words, shapes, images/logos, sounds, colours, moving images, aspects of packaging and combinations of any of these. Each type serves to protect different aspects of your brand identity, allowing you to safeguard various elements associated with your goods and services.
The cost of registering a trade mark in Australia starts at AUD 250 per class for a standard online application, and can go up depending on the number of classes and specific services required. Additional fees may apply for professional assistance or legal advice, and renewal fees are required every 10 years.
Yes, registering a trade mark for your logo in Australia is crucial for protecting your brand identity and preventing others from using a similar graphic to identify their business. Registering your logo as a trade mark gives you exclusive legal rights to use it and helps you build and maintain a unique brand in the marketplace.