Trade Marks in Australia: Headstart Applications

What is it?

A Headstart Application is a pre-application service for trade marks in Australia. You lodge the trade mark and the Australian Trade Marks Office (Office) examines the trade mark and provides a Results Report within 5 days of lodgement (Results Report). The Results Report outlines any issues and barriers to registration of your trade mark (eg. similar trade marks already on the Australian Trade Marks Register, whether the Office considers your mark to be too descriptive etc.). Then, you will have 5 business days to decide as to whether you want to convert the Headstart Application into a standard application (or abandon the same). If you wish to convert the Headstart Application into a standard application then the trade mark proceeds through the standard trade mark process.

The Pros

  1. A standard trade mark application takes 3-4 months to be examined whereas a Headstart Application is examined within 5 business days. This is great if you are about to spend a lot of money on a marketing campaign using the trade mark and you want to know whether your trade mark is going to have issues obtaining registration.

If the Results Report raises issues/barriers, then you can consider changing your trade mark and/or curing any defects in your trade mark before spending a whole lot of money committing to it. This may save you from going through a costly re-brand and potentially infringing similar trade marks already on the Australian Trade Marks Register.

  1. When you lodge a Headstart Application, the details of the same remain confidential and are not published for the public to view until and if you decide to proceed with converting the Headstart Application to a standard application.

The Cons

  1. The goods/services you are able to claim in a Headstart Application are limited. So if you want a trade mark for a very specific good/service, a standard application may be a better option.
  1. You do not obtain a filing date when you lodge a Headstart Application. You get one the moment you convert the Headstart Application to a standard application. So although rare, there is a risk that you may receive clear Results Report, then before you convert it to a standard application, a third party lodges a trade mark that is similar to yours and during formal examination of the standard application, the third party’s trade mark is raised as a barrier against your standard application.
  1. The Results Report is not gospel. If you convert your Headstart Application to a standard application, the standard application will be formally examined and the Examiner is not bound by the results in the Results Report.
  1. You have 5 business days to decide whether you want to convert the Headstart Application into a standard application and this deadline is not extendable.

 

Further details can be found below:

Headstart Application Process

Practical benefits of registering a trade mark in Australia

The rights conferred on an owner of a registered trade mark are more comprehensive than and are in addition to the rights conferred on an owner of an unregistered trade mark.

A registered trade mark will give an owner significant commercial and practical benefits that may not be available to an owner of an unregistered trade mark. Further, registered rights are almost always more easily enforceable against third parties who may be using a trade mark that is deceptively similar to a registered trade mark.

Companies such as Google and Facebook have specifically designed and implemented formal processes enabling an owner of a trade mark to report claims of trade mark infringement.  An owner of a registered trade mark will find it easier to use processes such as these to enforce their rights in a registered trade mark, as opposed to a business owner who relies on rights in an unregistered trade mark.

Another practical benefit of owning a registered trade mark in Australia is that an owner of a registered trade mark is able to formally notify the Australian Customs and Border Protection Service (Australian Customs) of its registered mark. Australian Customs is then able, and will seize any counterfeit goods on behalf of the owner of the registered trade mark before these counterfeit goods are brought into Australia. This service is provided by Australian Customs to owners of registered trade marks at no cost. However, this service is not available to an owner of an unregistered trade mark.

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Link to Google’s offer