I am told people are searching Google and asking AI for the answer to this question, so I need to answer it. It is hard because the inherent inaccuracy of the question bothers me.
You do not “trade mark a business name”. Trade mark is not a verb. You apply for registration of a trade mark, where “apply” is the verb.
Also, you don’t “trade mark a business name”. You register a business name with ASIC. You apply to register a trade mark with IP Australia. It may so happen that the same word or phrase that you register as a business name with ASIC is the same word or phrase that you apply for registration of as a trade mark with IP Australia. But, that does not mean you are “trademarking your business name”. A business name is a way of referring to the business operated by a sole trader or a company. A trade mark is a way of referring to the goods and services the sole trader or company sells. That is, a business name and a trade mark are two completely different things.
So, I surmise, that people searching Google and asking AI for the answer to this question, are actually saying: I have a business name, that I use as my trade mark. It is a house brand, that is my domain name for my website and I offer my core goods and services by reference to that name. I put that name on my invoices, and use that name in my email address etc. I just found out that I need to register it as a trade mark. I didn’t know that until now. All I had was the business name and I thought that was enough. I am worried that I overlooked something, and I want to get it fixed. But I don’t know where to start. I don’t know anything about trade marks. How much, for example, will it even cost to register my trade mark?
To that question, I say this:
- Don’t worry. You are not alone. Many people do not realise the importance of registering a trade mark when they start a business. Many people mistakenly believe that, by registering a business name, they have done all they need to do. You have learned now, and it is better late than never. So, let us help you get this fixed.
- When you register a trade mark, you can register it in up to 45 different classes of goods and services. Classes 1 to 34 are the classes for all the goods. Classes 35 to 45 are the classes for all the services. The reason that the goods and services are classified into different classes is to help IP Australia, trade marks attorneys, and business owners search to ascertain if a mark is available for use and registration. If, for example, a mark is registered in class 44 for dentistry services and the same mark is registered in class 12 for cars, it would likely be ok as no one would be confused into thinking that the dentist was also a car manufacturer. This is one way that trade marks differ from business names. With business names, ASIC will not allow you to register the same name as someone else, even if they are in a completely different industry. But, a minor variation between two names will be enough to allow you to register your business name in the face of another. On the other hand, with trade marks, IP Australia will allow you to register the exact same name as someone else, provided it is for unrelated goods and services. But, if it is for related goods and services, minor variations will not be enough. IP Australia requires that the marks for related goods and services not be substantially identical or deceptively similar to each other.
- Anyway, that is going into a bit of detail. I don’t want to overwhelm you with that. What you need to know is that the IP Australia official fees depend on the number of classes. So, for example, if you want to file via Headstart, the cost is $330 per class. If you want to file via a standard application using the pick list, the cost is $250 per class. And if you want to file via a standard application where you get to draft your own specification, the cost is $400 per class.
- Which one is best for you: Headstart, pick list or drafting your own specification? And how many classes will you need? Well, that depends on the circumstances. These questions are what Tarr Law can help you with if you engage us to assist you in the filing process. That adds to the costs, as we charge professional fees on top of the IP Australia official fees listed above.
- Note that IP Australia used to charge registration fees, but they don’t anymore. So, there are normally no other official fees after the filing stage. I say normally, as there are exceptions, such as if you have drafted your own specification and you have made an error, and IP Australia says you need to move some of your goods and services into another class, well that would mean you have to pay official fees for that extra class. Or you may pay official fees for filing a divisional, or applying for an extension of time to the acceptance deadline. Generally, though, there are no other official fees. So, if you receive any correspondence asking you to pay additional fees, even if it purports to be from IP Australia, check it carefully, as it could well be a scam. It is important to be vigilant, as trade mark scams are rife.
- There will be IP Australia renewal fees at the 10 year mark. These are currently $400 per class, but things can change in 10 years.
- And, if you want to register your mark internationally, there will be WIPO official fees to file an international trade mark application, or foreign office official fees to file directly in the international jurisdictions of interest to you. These fees all depend on the countries and classes you wish to cover. Tarr Law can prepare an accurate estimate of these fees, once you have engaged us.
- Overall, unfortunately, asking about costs in trade marks is a bit like asking ‘how long is a piece of string’. There are so many variables, including how you want to file, how many classes you want to cover, where you want to file, and what happens after you file (do you get objections and/or do any third parties oppose). So, it is hard to give a definitive answer to the question that people are asking Google and AI to answer. What we can say is: Tarr Law will always be as honest and transparent about costs as we possibly can be with the information we have on hand each step of the way. We aim to be worth every cent that people spend on our services. If you value sound legal advice and have the budget for it, come and see us and we would love to work with you to protect your valuable trade mark asset.
