Common mistakes to avoid when registering a trade mark in Australia

A strong brand is one of the most valuable assets a business can own. It defines your unique identity, sets you apart from your competitors, and builds trust with your customers. Protecting your brand starts with registering your trade mark, as it’s the best way to safeguard your unique brand personality and prevent unauthorized use by others.

But here’s the challenge: trade mark registration isn’t always as straightforward as it seems. The process can be complex, and making a mistake could cost your business time, money, and even the ability to secure proper protection.

Getting it right matters, and avoiding common pitfalls is key. That’s why we’ve outlined the three most frequent mistakes businesses make when registering trade marks in Australia, so you can navigate the process with confidence and protect what makes your brand truly yours.

Common Mistake 1: Not Conducting a Thorough Trade Mark Search

Failing to conduct a professional trade mark search can result in rejection of your trade mark, legal disputes, or even forced rebranding. It is crucial for you to confirm that no one else has already registered or is in the process of registering a similar trade mark to avoid these costly complications.

Before filing a trade mark application, it is essential to conduct a thorough search to identify any potential conflicts. IP Australia has a free database, the Australian Trade Mark Search, which allows businesses to check for existing trademarks.

You’ll need to check there aren’t any registered or pending trade marks that are:

• “Substantially Identical” or “Deceptively Similar” to yours; and
• In respect of the same or similar or closely related goods and/or services.

If you don’t feel confident conducting a comprehensive trade mark search, it’s a good idea to consult an Trade Mark Expert.  This is particularly important when dealing with international trade marks, as they could affect your application due to priority claims, where earlier filings in other countries take precedence over later ones.

Case study: In‑N’Out Burger vs Down N’ Out

One common reason for opposing a trade mark application is if it’s too similar to an existing international registration. A famous example of this is the In‑N’Out Burger vs Down N’ Out case.

In this case, the well-known Californian chain In‑N’Out Burger claimed that the Australian business Down N’ Out was unfairly “riding on the coat-tails” of its trade marks, reputation, and branding. According to In‑N’Out, the name “Down N’ Out” was so similar to theirs that it could confuse customers into associating the two brands.

Down N’ Out argued that In‑N’Out didn’t have a formal operational presence in Australia. However, In‑N’Out successfully proved that its brand had built a strong reputation locally through pop-up stores and an active online presence. Ultimately, the Federal Court sided with In‑N’Out, ruling that Down N’ Out had infringed on their trade marks.

Takeaway: This case is a great reminder of how important it is to avoid creating a trade mark that could be mistaken for an existing, internationally recognized brand, even if that brand isn’t physically operating in Australia.

Common mistake 2: Choosing the Wrong Trade Mark Classes

As part of your application, you’ll need to pick the classes of goods and services that you’ll use your trade mark for. With 45 classes to choose from, selecting the wrong ones could leave your brand under protected or lead to unnecessary costs.

It is so important to get this right because you’ll only have exclusive rights to use your trade mark for the goods and services you list in your application. If you overlook a relevant class and your business later expands into new directions, you’ll need to register new applications in those additional classes. Once your application is submitted, new classes cannot be added- you would have to file a completely new application.

As such, to give your trade mark the strongest foundation, think carefully about how you plan to use it now and in the future. Taking the time to align your application with your long-term business strategy can save you time, effort, and expense down the line.

Case study: Cosmetics Classes

Emma, a small business owner, launched a premium line of natural skincare products under her new brand. Excited to protect her new brand, she filed a trade mark application covering Class 3 (which includes cosmetics and skincare). So far, so good.

But here’s the catch: Emma also sold her products through an online store and offered subscription skincare boxes — services that fall under Class 35 (retail and online store services) and potentially Class 44 (beauty and skincare consultation services).

Emma only applied in Class 3, believing it was sufficient to protect her brand. A year later, a competitor launched a similar skincare subscription service under a very similar name and applied to register the name in Class 35.

Because Emma hadn’t registered her mark in the classes covering her sales and service activities and because class 35 is not cross-listed against class 3, the Office did not raise Emma’s prior mark as an objection. Regrettably, Emma couldn’t stop the competitor from registering the very similar mark.

Emma faced brand confusion, lost customers, and had to invest in rebranding her online and subscription business. Filing in the right classes from the start would have cost a few hundred dollars more – but saved her thousands in legal and marketing costs down the line.

Takeaway: Trade marks aren’t just about what you sell – they’re also about how and where. With 45 different classes, it’s easy to miss one that matters. A good trade mark strategy should always be tailored to your actual and intended business activities — now and in the future.

Common mistake 3: Failing to Respond to IP Australia

IP Australia is responsible for everything to do with trade marks registered in Australia. Your trade mark application will be filed and, if successful, registered with IP Australia. But here’s where things can go wrong—not responding to IP Australia on time when they reach out is an easy misstep that could derail your application.

If IP Australia flags any issues or needs more details, they’ll give you clear deadlines to respond. For example, if your trade mark doesn’t meet their requirements, you’ll get an adverse examination report. You’ll have 15 months to address the issues raised, but if you miss that window, your application could be deemed abandoned.

Staying on top of their communications and meeting deadlines is crucial to keeping your trade mark application on track. It’s all about being proactive and making sure nothing slips through the cracks.

Case study: A Missed Deadline That Cost a Brand Its Trade Mark

A business owner filed a trade mark application for their new food brand. Several months later, IP Australia issued an adverse examination report raising concerns about the mark’s distinctiveness and potential conflicts with existing registrations.

The report clearly stated that the applicant had 15 months to address the objections and provide a response, which could include written arguments, evidence of use, or amendments.

The applicant mistakenly assumed that no further action was required until hearing back again from IP Australia. They overlooked the deadline, and no response was submitted within the 15-month timeframe.

The application was deemed abandoned. The applicant not only lost their filing fees but also lost priority to the mark – and in the meantime, a competitor registered a similar name, making it harder and more expensive to refile.

Takeaway: Failing to respond to IP Australia within the given timeframe may result in your application lapsing, no matter how strong your brand is. Always read communications from IP Australia carefully and act promptly – or have a trade mark attorney manage it for you to avoid critical oversights.

Please also remember that IP Australia recommends responding well before the deadline to allow time for review, gathering evidence, or exploring alternative filing strategies if needed.

 

Registering your trade mark can be a complex process, requiring careful research, strategic communication, and legal expertise. Halfords IP specializes in strategic trade mark prosecution and enforcement advice. We offer commercially guided clear advice to ensure your brand is fully protected from day one with us. For further information or assistance, contact Aparna Watal.