The Trademark Application Process: What Happens After You File

The moment you click “submit” on your trademark application with IP Australia, it can feel like your work is done. In reality, filing is just the beginning of a structured examination and registration process that typically takes between seven and eight months — and sometimes considerably longer if complications arise.

Understanding what happens after you file is essential for managing expectations, meeting critical deadlines, and ultimately securing the strongest possible protection for your brand. This guide walks you through every stage of the post-filing journey under Australia’s Trade Marks Act 1995 (Cth), so you know exactly what to expect and how to respond at each step.

The Filing Date and Your Immediate Rights

Once IP Australia receives your application, it is assigned an official filing date and application number. This date is significant because it establishes your priority date — the date from which your rights are assessed against competing applications or registrations.

Upon filing, you receive a receipt confirming your application details, including the mark, the applicant’s name, and the classes of goods and/or services covered. It is worth reviewing this receipt carefully. Errors in the application — such as incorrect class selections, misspelled words, or an inaccurate applicant name — are far easier to address at this early stage than later in the process.

While your application is pending, you do not yet hold a registered trademark. However, the filing date provides important retrospective rights. If your mark proceeds to registration, your exclusive rights are deemed to have commenced from the filing date, meaning you may be able to claim damages or an account of profits for infringing conduct that occurred during the application period.

Stage 1: Formalities Check

Before substantive examination begins, IP Australia conducts a formalities check to ensure your application is complete and compliant. This involves verifying that:

• The application has been correctly filed and the appropriate fees paid
• The applicant’s details are accurately recorded
• The goods and/or services are classified according to the Nice Classification system
• The representation of the mark is clear and meets technical requirements

If there are deficiencies, IP Australia will issue a formalities notice requesting corrections. These are generally straightforward to resolve, but it is important to respond within the stipulated timeframe to avoid delays.

Stage 2: Substantive Examination

This is the most critical phase of the process. A trademark examiner at IP Australia will assess your application against the grounds for rejection set out in the Trade Marks Act 1995. Examination typically commences within approximately four months of filing, though this timeframe can fluctuate depending on IP Australia’s current workload. For more details, see our guide to trademark infringement in australia: what it is.

The examiner considers a range of factors, including:

Distinctiveness (Sections 41 and 41A)

The examiner assesses whether your mark is capable of distinguishing your goods or services from those of other traders. Marks that are descriptive, generic, or commonly used in the relevant industry face significant hurdles. For example, a word mark consisting solely of a laudatory term like “PREMIUM” for food products would likely be considered insufficiently distinctive.

Marks that are not inherently distinctive may still be registrable if you can demonstrate that they have acquired distinctiveness through extensive use — known as factual distinctiveness. This requires evidence such as sales figures, advertising expenditure, consumer surveys, and duration of use.

Similarity to Existing Marks (Section 44)

The examiner searches IP Australia’s Trade Marks Register to identify any earlier marks that are substantially identical or deceptively similar to your application, covering the same or similar goods or services. This is often the most common ground for objection.

Importantly, the comparison is not limited to identical marks. The examiner considers whether an “imperfect recollection” by a consumer might lead to confusion or deception. Factors such as visual appearance, phonetic similarity, and conceptual meaning are all weighed in this assessment.

Other Grounds for Rejection

Additional grounds the examiner may raise include:

• Section 42 — marks that contain scandalous matter or are contrary to law
• Section 43 — marks that are likely to deceive or cause confusion
• Section 39 — marks that are identical to, or confusingly similar with, a mark that has been applied for or registered in respect of similar or closely related goods or services by another party with an earlier priority date

Stage 3: The Examination Report

If the examiner identifies any issues, they will issue an adverse examination report (sometimes called an “examiner’s report” or “office action”) setting out the grounds for objection. You will typically have 15 months from the date of the first report to overcome all objections, though this period is measured from the original report date, not from any subsequent correspondence. We cover this topic in how to register a trademark in australia:.

Responding to an adverse report requires careful strategy. Depending on the nature of the objection, your options may include:

• Filing written submissions arguing that the objection is not warranted — for example, distinguishing your mark from the cited prior mark by highlighting differences in appearance, sound, or meaning, or by demonstrating that the respective goods and services operate in different trade channels
• Amending the application — such as narrowing the specification of goods or services to avoid overlap with cited marks, or adding a disclaimer or endorsement
• Providing evidence of use — where distinctiveness is at issue, filing a declaration supported by documentary evidence demonstrating that consumers have come to recognise the mark as a badge of origin
• Seeking consent from the owner of a cited mark — a letter of consent from the owner of a conflicting registration can be persuasive, though IP Australia is not obliged to accept it
• Requesting a hearing — if you cannot resolve the objection through correspondence, you may request a formal hearing before a Hearings Officer, who will make a binding decision

The 15-Month Deadline

This deadline is critically important. If all grounds of objection are not overcome within 15 months of the first adverse report, your application will lapse. While extensions of time are available in some circumstances, they are not granted as a matter of course. Allowing an application to lapse through inattention to deadlines is one of the most avoidable — and costly — mistakes in trademark prosecution.

Stage 4: Acceptance

If the examiner is satisfied that your application meets all requirements — either because no objections were raised or because you have successfully overcome them — the application will be accepted and published in the Australian Official Journal of Trade Marks.

Acceptance is a significant milestone, but it does not yet mean your mark is registered. There is one more hurdle to clear.

Stage 5: Opposition Period

Following acceptance, your application is advertised in the Official Journal, and a two-month opposition period commences. During this window, any third party may oppose your registration by filing a Notice of Intention to Oppose.

Opposition proceedings are adversarial in nature and can be initiated on a broad range of grounds, including many of the same grounds the examiner considers, as well as additional grounds such as:

• Prior use by the opponent (Section 58)
• Bad faith on the part of the applicant (Section 62A)
• The applicant not being the owner of the mark (Section 58A)
• The mark being likely to deceive or cause confusion due to the opponent’s existing reputation (Section 60)

If an opposition is filed, the proceedings follow a structured timetable involving the filing of evidence by both parties, with the possibility of a hearing before a Hearings Officer. Opposition proceedings can add many months — or even years — to the registration timeline, and they can be resource-intensive. Many oppositions, however, are resolved through negotiation, often resulting in co-existence agreements, amendments to specifications, or one party withdrawing. See also our how to respond to a trademark opposition.

If no opposition is filed within the two-month period, or if an opposition is filed and ultimately fails, your application will proceed to registration.

Stage 6: Registration

Once the opposition period closes without challenge (or any opposition is resolved in your favour), IP Australia will register your trademark and issue a Certificate of Registration. Your mark is then entered on the Trade Marks Register with full legal effect.

A registered trademark in Australia is valid for an initial period of 10 years from the filing date. It can be renewed indefinitely in 10-year increments, provided renewal fees are paid before the expiry date (or within a six-month grace period thereafter, with a late fee).

After Registration: Maintaining and Enforcing Your Rights

Registration is not the end of the story. To maintain the strength and validity of your trademark, you should be aware of the following ongoing obligations and considerations:

Use Requirements

Under Section 92 of the Trade Marks Act 1995, a registered trademark is vulnerable to removal if it has not been used in good faith by its owner during any continuous period of three years. This is commonly known as a non-use removal action. It is essential that you genuinely use your mark in the course of trade in connection with the registered goods or services — or have concrete plans to do so.

Watching and Enforcement

Registration grants you exclusive rights, but enforcing those rights is your responsibility. Monitoring the Trade Marks Register and the marketplace for potentially infringing marks allows you to take timely action — whether through opposition proceedings against new applications, cease and desist correspondence, or infringement proceedings in the Federal Court of Australia.

Renewal

As noted, renewal is required every 10 years. IP Australia will send a reminder approximately six months before the renewal date, but the obligation to renew rests with the trademark owner. Our when do you need a trademark lawyer? offers additional context.

Recording Changes

If there are changes to the trademark owner’s name or address, or if the mark is assigned or licensed to another party, these should be recorded on the Register to ensure it remains accurate and to preserve the enforceability of your rights.

Common Pitfalls to Avoid

Having guided many applicants through this process, several recurring mistakes are worth highlighting:

1. Inadequate pre-filing searches — Filing without a thorough search of the Register (and common law use) significantly increases the risk of objections and oppositions.
2. Overly broad or imprecise specifications — Claiming goods and services beyond what you actually provide, or using vague terminology, can attract objections and make your registration vulnerable to partial removal.
3. Ignoring deadlines — The 15-month examination deadline and the opposition window are strict. Missing them can have irreversible consequences.
4. Failing to respond strategically — A poorly crafted response to an examiner’s objection can entrench the problem rather than resolve it. Each response should be carefully considered in terms of both its immediate effect and its implications for the broader registration strategy.
5. Assuming registration equals perpetual protection — Without ongoing use, monitoring, and renewal, a registered trademark can lose its value and enforceability over time.

A Practical Timeline

To summarise, here is a typical timeline for an uncontested Australian trademark application:

Where objections or oppositions arise, the total timeline can extend to 18 months, two years, or beyond.

Moving Forward With Confidence

The trademark application process in Australia is methodical and transparent, but it demands attention to detail, strategic thinking, and respect for statutory deadlines. Whether you are filing your first application or managing a growing portfolio, understanding what happens after you file places you in the strongest possible position to secure and protect the brand assets that underpin your business.

If you encounter an adverse examination report or face opposition proceedings, seeking professional guidance early can make a material difference to the outcome. The decisions made at each stage of the process have lasting implications for the scope and enforceability of your trademark rights — and getting them right the first time is always preferable to attempting to correct them later.