eServices help - Trade mark application

On this page:

  • Your reference
  • ABN
  • ACN/ARBN
  • The agent acting for this application is:
  • Legal Name of the Organisation
  • Trade Mark number
  • Address for service of legal documents in Australia
  • Is this application for two or more very similar Trade Marks? (a series)
  • Describe your shape
  • Describe your sound
  • Describe your colour
  • Describe your movement
  • Describe your other kind of Trade Mark
  • Does your Trade Mark contain non-English words or foreign characters?
  • I have applied to register this identical Trade Mark in another country (convention) within the last six months.
  • I am entitled to file a divisional application on the basis of one or more earlier applications.
  • Divide the goods and/or services from the parent application to the divisional application
  • My Trade Mark is a certification mark (rules to be approved by the ACCC)
  • My Trade Mark is a collective mark (used in the course of trade by members of an association or organisation)
  • My Trade Mark is a defensive mark
  • Attach certification rules
  • Attach evidence
  • Do you propose any conditions or limitations to the registration of this Trade mark?
  • Select how you will nominate your list of goods and services
  • Enter a single word or phrase (e.g shoe or shoe polish)
  • Attach a single file containing your trade mark
  • Class Number
  • Description
  • Date

 

Your reference

Your reference allows you to enter a unique reference of your choice. You can use any combination of uppercase letters, lowercase letters, numbers and special characters.

This reference can be used by you to identify this eServices transaction.

ABN

An ABN is an Australian Business Number.

ACN/ARBN

An ACN is an Australian Company Number.

An ARBN is an Australia Registered Body Number.

The agent acting for this application is:

You are required to nominate a main contact for your application. The main contact does not need to be an applicant. Correspondence regarding your application will be addressed to the main contact that you nominate.

If the main contact is not already listed as an applicant, you can add the name of the person, agent or authorised signatory to your application (e.g If you have selected an organisation as your main contact you can nominate who your correspondence will be addressed to).

Legal Name of the Organisation

It is important the name you enter here is a legal entity that has �legal personality� � this means the entity needs to be legally able to own property. A registered company or an incorporated association are examples of entities which have �legal personality�. Business names and Trusts do NOT have legal personality. In the case of a trust, it is the trustees (full names, no initials for individuals) who have legal personality. If the owner entered does not have legal personality, you may lose your lodgement date and any fees you have paid. If you are unsure about what details to enter here, please contact us on 1300 65 10 10.

Trade Mark number

A Trade Mark number is assigned to each trade mark application. You can find the Trade Mark number on any correspondence we have sent to you regarding this Trade Mark or on the Australian Trade Marks Online Search System (ATMOSS).

Address for service of legal documents in Australia

This is the address where IP Australia will send all correspondence relating to an IP right. This address may be a street address or a post office box, and must be located in Australia.

Do not provide your home address to IP Australia if you do not want it published online. You can provide an Australian post office box or other valid Australian address as your address if you want to keep your home address private.

Is this application for two or more very similar Trade Marks? (a series)

An application for a series of trade marks incurs a significantly higher application fee than a traditional trade mark. Only in limited circumstances will a series of trade marks be able to be registered. If your series is found to be invalid, the application fee is not refundable.

If you have any questions regarding applying to register a series of trade marks, please read the information on our website about series trade marks or call IP Australia on 1300 65 10 10 before filing.

Describe your shape

This is an example of how you could describe your shape Trade Mark to correctly complete the form:

If your shape is a bottle, you could describe your shape by typing the word 'BOTTLE' into the box.

The full description of your shape would then be: "The Trade Mark consists of the shape of a BOTTLE as shown in the representation(s) attached to the application form."

A perspective diagram should be included in the file you attach.

Describe your sound

This is an example of how you could describe your sound Trade Mark to correctly complete the form:

If your sound is a siren, you could describe your sound by typing 'A SIREN' into the box.

The full description of your sound would then be:

The sound of A SIREN as provided in the sound file or musical score attached to the application form.

Describe your colour

These are examples of how you could describe your colour Trade Mark to correctly complete the form:

Example One

If the colour you are applying for is the colour yellow and it is applied to a bottle, you could describe your colour by typing the words 'YELLOW (Pantone 012)' and the into the first box and then typing the words 'A BOTTLE' into the second box.

The full description of your colour would then be:

The Trade Mark consists of the colour YELLOW (Pantone 012) as applied to A BOTTLE as shown in the representation(s) attached to the application form.

Example Two

If the colour you are applying for is the colour purple and it is applied to chocolate bar wrappers, you could describe your colour by typing the word 'PURPLE' into the first box and 'CHOCOLATE BAR WRAPPERS' into the second box.

The full description of your colour would then be:

The colour PURPLE as applied to CHOCOLATE BAR WRAPPERS as shown in the representation(s) attached to the application form.

Describe your movement

This is an example of how you could describe your moving Trade Mark to correctly complete the form.

If your movement is an animated cartoon dog jumping, you could describe your movement by typing 'A VISUAL REPRESENTATION OF AN ANIMATED CARTOON DOG JUMPING' into the box.

The full description of your movement would then be:

The Trade Mark is A VISUAL REPRESENTATION OF AN ANIMATED CARTOON DOG JUMPING as shown in the video file attached to the application form.

Describe your other kind of Trade Mark

This is an example of how you could describe your scent trade mark or combination Trade Mark to correctly complete the form:

Example One - Combination

If the mark you are applying for is a combination of several kinds of marks, you will need to enter a full description into the box. If your combination is the shape of a bottle and the colour red applied to the bottle and the word 'EXAMPLE', you could describe your combination by typing 'the shape of a BOTTLE and the colour RED applied to the bottle and the word EXAMPLE as shown in the representation attached to the application form'.

The full description of your combination would then be:

Combination: My Trade Mark consists of the shape of a BOTTLE and the colour RED applied to the bottle and the word EXAMPLE as shown in the representation attached to the application form.

Example Two - Scent

If the scent you are applying for is strawberries applied to boxing gloves, you could describe your scent by typing 'the scent of STRAWBERRIES as applied to the BOXING GLOVES'.

The full description of your combination would then be:

The Trade Mark consists of the scent of STRAWBERRIES as applied to the BOXING GLOVES.

Does your Trade Mark contain non-English words or foreign characters?

If your trade mark contains non-English words or foreign characters, you must provide a translation and/or transliteration.

Translation means providing the English meaning of the non-English word. Transliteration means converting the foreign character(s) or word(s) into the corresponding English character(s) or word(s). You must also identify the language of the non-English word(s) or foreign character(s) in your trade mark.

This is an example of a translation:

If your trade mark was CHAT NOIR, this is a FRENCH phrase that means BLACK CAT in English

This is an example of a transliteration:

If your trade mark was chinese-tiger-symbol-4, this is a CHINESE character, with the transliteration HU, which means TIGER in English

If you are providing a transliteration of Chinese characters, you should use the Pinyin system.

If you are providing a transliteration of Japanese characters, you should use the Hepburn system.

I have applied to register this identical Trade Mark in another country (convention) within the last six months.

Convention priority can be claimed if you have applied for this same Trade Mark in another convention country in the last 6 months and you want to claim the earlier filing date for your Australian application.

Once you have entered the details of your convention claim, click 'SAVE CONVENTION CLAIM' to add it to the application.

You can enter multiples priority claims based on different overseas applications for different goods/services. To enter more than one convention claim to the application, click 'ADD ANOTHER CONVENTION CLAIM' after you have saved your first claim.

You can also enter multiple priority claims for different goods and/or services or different priority dates under the same convention claim by entering each one separately on the application form.

Once you have entered the details of your classes of goods and/or services, click 'SAVE GOODS AND SERVICES'.

To save or add further claims for classes of goods and/or services, click 'ADD GOODS AND SERVICES'.

I am entitled to file a divisional application on the basis of one or more earlier applications.

A divisional application divides some of the goods and/or services from an existing application (parent) into a new application (divisional application). The divisional application keeps the earlier filing date of the parent application.

There are strict requirements for filing a divisional application:

  • The divisional application must be for the same trade mark as the parent application.
  • The divisional applicant must also be the owner of the of the parent trade mark.
  • The parent application must still be within the time permitted to finalise your application (pending).
  • You must not expand on the classes of goods and/or services contained in the parent application (you are simply dividing them into separate applications).
  • You must specify which goods and/or services will remain in the parent application and which ones will be divided into the new application.
  • You can not have the same goods and/or services in both the parent and the divisional applications.
  • You can not add brand new classes or goods and/or services to either the parent or the divisional application.

You can divide the goods and/or services from the parent application to a new application (divisional) by entering the parent application number and then clicking 'RETRIEVE DETAILS'.

If you wish to claim a convention priority date on your divisional application, you will also need to complete the convention claim part of the application form.

For further information regarding divisional applications call IP Australia on 1300 65 10 10.

Divide the goods and/or services from the parent application to the divisional application

The goods and/or services for the parent application appear in the first table and are sorted under each class. You may find it easier to divide your goods and/or services one class at a time.

If you want to remove an entire class from the parent application click the Remove Class link.

If you want to copy or delete whole or part of a class click the Edit link. A text box field will open and allow you to highlight and copy, or delete the goods and/or services that you want to move into your divisional application.

The goods and/or services for the divisional application appear in the second table and are sorted under each class.

To add the copied goods and/or services to the divisional application click on the Edit link for the corresponding class and paste the goods and/or services into the text box that will open. If you haven't done so already, don't forget to go back to the first table and delete the goods and/or services that you copied into the second table.

Note:

  • You cannot have overlap between the goods and/or services claimed in the parent application and the divisional application; they must be in one or the other.
  • You cannot expand on the existing scope of goods and/or services beyond those claimed in the parent application.
  • Goods and/or services should be separated by a semi colon ";" (e.g. books; magazines; newspapers)

Example of a valid divisional application

Let's say in the original application (parent) you claimed the following goods and/or services;

clothing including jackets, jumpers and singlet tops.

The table below gives an example of how you might separate those goods and/or services between the parent and the divisional application.

Division of goods between the parent and the divisional application

 

 

Parent

Divisional

Goods and/or services

Singlet tops

Jackets, jumpers

In the above example the broad claim for clothing has been removed but the goods and/or services claimed across the parent and divisional still represent all of the items that were specified in the original (parent) application. The goods and/or services claimed in the divisional application are only some of the goods and/or services that were originally claimed which makes this a valid divisional application.

Example of an invalid divisional application

Let's say in the original application (parent) you claimed the following goods and/or services;

Printed matter; books; magazines

The table below gives an example of how you might incorrectly separate those goods and/or services between the parent and the divisional application.

Division of goods between the parent and the divisional application

 

 

Parent

Divisional

Goods and/or services

Magazines

Printed matter; books

In the above example the broad claim for magazines has remained in the parent application and Printed matter and books have been added to the divisional. This would be an invalid application because the broad claim for printed matter would already include magazines because magazines are also printed matter. This means that the divisional application would then be claiming all the goods and/ or services that were being claimed by the parent and would be invalid.

My Trade Mark is a certification mark (rules to be approved by the ACCC)

A certification mark is used to signify accuracy, quality, place of origin, method of manufacture or another characteristic as defined by the rules of use of the certification mark (e.g. The Heart Foundation Tick). The rules that govern the use of a certification mark must be approved by the Australian Competition Consumer Commission (ACCC).

These rules can be provided as part of the application or during the examination process. To use a certification mark, an application is made to the owner of the mark and the usage must comply with the Trade Mark rules.

My Trade Mark is a collective mark (used in the course of trade by members of an association or organisation)

A collective mark is used in the course of trade by the members of an association or an organisation. Users of a collective mark must be members of the specified association or organisation. A collective mark may be used to identify that members goods and/or services adhere with standards as specified by the mark. e.g. Scouts Australia

A collective trade mark can not be assigned or sold to another party.

My Trade Mark is a defensive mark

A defensive Trade Mark allows the owner of a well known trade mark to register that trade mark for a range of goods and/or services even if the owner does not use or intend to use the Trade Mark in relation to those goods and/or services.

To protect their existing Trade Mark through a defensive mark, the applicant must be able to provide evidence that the public associates their trade mark with a particular category of goods and/or services. The Trade Mark must already be registered in Australia.

For further information regarding defensive trade marks, call IP Australia on 1300 65 10 10.

To apply for a defensive mark you will need to provide the Trade Mark number: Provide the trade mark number(s) of the existing registered Trade Mark(s) and click 'RETRIEVE DETAILS'. The goods and services classes will be retrieved from the existing Trade Mark and you will be able to amend the list before submitting the application.

Attach certification rules

Attach a copy of the rules for the use of your certification Trade Mark. The rules of certification marks must be assessed by the Australian Competition Consumer Commission (ACCC). The ACCC considers the effectiveness of the rules and the likely effect the certification mark will have before providing approval.

You can attach one file in one of the following formats: PDF (.pdf), JPEG (.jpg, .jpeg), TIFF (.tif), PNG (.png), TXT (.txt), DOC (.doc, .docx) or XML (.xml). The file can not exceed 20MB in size.

Attach evidence

Attach a copy of any evidence that supports your claim for a defensive mark. You may be asked to supply further evidence by the examiner.

You can attach the following file formats: PDF (.pdf), JPEG (.jpg, .jpeg), TIFF (.tif), PNG (.png), TXT (.txt), DOC (.doc, .docx) or XML (.xml). The file can not exceed 20MB in size.

Total attachments can not exceed 100MB in size.

Do you propose any conditions or limitations to the registration of this Trade mark?

This is where you provide us any conditions or limitations to the use of your trade mark that you have not covered in other parts of the application form.

For further information regarding conditions or limitations, call IP Australia on 1300 65 10 10.

Select how you will nominate your list of goods and services

When you apply for a trade mark, you must provide a description of the goods and/or services you are using or intend to use your trade mark on in the near future. This is because trade mark registration gives you the exclusive right to use your mark in connection with the goods and/or services that you nominate in your application for registration.

The goods and services are divided into 45 classes. You need to select the goods and/or services that you want to cover from one or more classes. You are charged a fee for each class you select - not the number of goods and/or services within that class. These fees are generally not refundable. Only the goods and/or services you list in your application are covered by your trade mark. You cannot change the goods and/or services you have claimed once you submit your application.

You should aim to keep your list of goods/services as concise as possible whilst accurately covering your desired goods/services.

Read the Classes of Goods and Services information on our website or view our Choose Wise Video for more information on selecting goods and/or services.

You can provide your list of goods and/or services in one of three ways:

Search IP Australia's list of goods and/or services

Choosing this option will allow you to search for a single word or phrase. The search will provide you with an indicative list of the goods and/or services that typically fall in each class and that may apply to your trade mark. You can then pick the goods and/or services that you want from the list and add them to your application.

The fee you pay per class is lower if you use this search option. Select this option if you are unsure which class applies to your goods and/or services.

Enter your own list of goods and/or services

Choosing this option will allow you to select a class and type your nominated goods and/or services into the application. You could consider selecting this option if you know which class applies to your trade mark or if you cannot find your goods/services in IP Australia's list.

The fee you pay per class is higher if you use this search option and the chances of making an error is higher than if you select from our list of goods and/or services. Remember once you have submitted your application you cannot add new goods and/or services to your application and the fees you have paid are not refundable.

Retrieve a list of goods and/or services from an existing application

Choosing this option will allow you to copy the list of goods and/or services form an existing application and apply them to your application. You can only retrieve the details from applications filed on or after 1 January 2002.

The fee you pay per class is higher if you use this search option. Due to changes in the classification over time, selecting this option is not a guarantee that the goods/services retrieved will be correctly classified.

Enter a single word or phrase (e.g shoe or shoe polish)

Before you begin, think carefully about the goods or services you want protected by your trade mark. If you make a mistake, you will not be able to expand your list of goods or services once you submit your application.

To help you decide what goods and/or services to list, think about the exact nature of your business and ask yourself the following:

  • What would you advertise your business under in a business directory?
  • What goods and/or services do people pay you for?
  • What is the nature of your business?
  • What are you known for by your customers/clients?
  • What products or services does your business provide?

Once you have determined which goods and/or services to claim, enter a search term and click the search button. An indicative list of the goods and/or services that typically fall into each class will be displayed.

Start with a broad search and narrow it down. You can add up to 100 goods and/or services per class to your application, however, you should only select goods and/or services that you are using or intend to use your trade mark on. You should aim to keep your list of goods/services as concise as possible whilst accurately covering your goods/services.

For a provider of a service:

  • A physiotherapist could search for "physiotherapy"
  • A retailer that sells goods from numerous sources could search for "retail"
  • A web designer could search for "design"
  • A mechanic could search for "car" and then select "maintenance" "installation" and "repairs" services

If you cannot locate your goods and/or services, try searching for a similar term.

  • e.g. instead of searching for "dog" try searching for "animal"
  • e.g. instead of searching for "doll" try searching for "toy"
  • e.g. instead of searching for "web site" try searching for "online"

Wildcard searching

If you search for 'cloth' in the list it will not return a result for 'clothing'.

A simple tip is to use a wildcard search, e.g. a search for cloth* will find cloth, clothes and clothing. Using * at the end of your search word can help you improve your search results.

Attach a single file containing your trade mark

For shape, colour, scent, feel, flavour and combination marks, you can attach one TIFF (.tif), JPEG (.jpg, .jpeg) and PNG (.png). The file can not exceed 20MB in size.

For sound marks you can attach one MP3 (.mp3) file. The file can not exceed 20MB in size.

For movement marks you can attach one MP4 (.mp4) file. The file can not exceed 20MB in size.

For series marks, you can attach multiples files in one of the following formats: PDF (.pdf), JPEG (.jpg), TIFF (.tif). The file can not exceed 20MB in size. Total attachments can not exceed 100MB in size. You can not use foreign characters within your attachment file name. This will generate an error in eServices.

See the Image requirements for eServices.

Class Number

If you are claiming more goods and/or services in Australia than are covered in your overseas application, you must nominate the Class Number of the goods and/or services contained in the earlier overseas application.

Enter the Class Number of the goods and/or services you wish to claim priority for, from your earlier application. This must be a two digit number and should be as specified on your earlier application.

You will be asked to nominate the goods and/or services for the new application on the next screen.

Description

If you are claiming more goods and/or services in Australia than are covered in your overseas application, you must provide the goods and/or services contained in the earlier overseas application.

Enter a description of the goods and/or services that you wish to add to your existing list of goods and/or services from the earlier application.

Date

Enter the filing date of the overseas application. If the convention claim is valid, this will become your Australian priority date.

Last updated: 
7 April 2016