Use TM Headstart for Speedy Registrations
Need a registered trade mark fast? Try using IP Australia’s “TM Headstart”.
IP Australia offer a pre-application service called “TM HeadStart” where an Examiner from IP Australia will assess your “draft” trade mark application before you lodge the final version. By using TM Headstart to file your trade mark application, you will receive quick feedback from the Examiner as to whether there are any barriers to registration. You will also have an opportunity to amend your trade mark application before filing the final version.
The TM Headstart process requires you to:
File a “draft” trade mark application. This is done electronically through the website at IP Australia and you will need to set up an online account if you don’t already have one.
IP Australia will provide you with a preliminary assessment report within 5 business days indicating whether the trade mark is clear for registration or letting you know if they see any barriers to registration. This will be communicated to you through the IP Australia online services portal; so, it is important that you check this portal for notices every day.
Once you receive the report, you will then have 5 business days to either:
Proceed with the trade mark application. You will pay the final application fee and your “draft” will become a standard application. Your trade mark filing rights will start on the date of filing the final, standard trade mark application;
Amend your trade mark application. You can amend the trade mark representation or make amendments to the class(es) and descriptions of goods and services. This is not allowed with a standard trade mark application; or
Let the draft trade mark application lapse.
When should you use TM Headstart?
TM Headstart is intended for first-time trade mark applicants. But it can be a useful tool for all trade mark applicants.
1 A trade mark clearance search will let you know if there are any prior trade mark applications or registrations that might be a block to your trade mark application. However, trade mark clearance searches can be expensive. Using the TM Headstart process means that you will receive an indicative assessment as to whether IP Australia see any prior trade mark applications or registrations as a block. However, a few words of caution:
IP Australia’s assessment is only indicative. IP Australia will still conduct a full examination of your trade mark application and are not bound to rely on the TM Headstart assessment.
IP Australia’s assessment will not include common law trade mark rights or unregistered trade marks. Because Australian law recognises unregistered trade mark rights, a full clearance search should be conducted before any trade mark launch.
2 Your trade mark will be accepted early. Not only will you receive an indicative assessment on your trade mark application within 5 business days, should you proceed with a final trade mark application, you will also receive a full examination report within 2-4 weeks. This is much quicker than the standard examination times of 3+ months. As a result of the earlier examination timeframe, you could have notice of “acceptance” of your trade mark as early as one month after filing.
Notice of acceptance is not a clear path the registration and you will still need to allow 6 months before your mark is registered[1]. But since only 1-2% of trade mark applications are opposed, it is good sign!
3 You can amend your trade mark application before filing. There are additional fees for filing amendments, but the option to amend your trade mark is not available when you file a standard trade mark application.
When should you not use TM Headstart?
1. TM Headstart requires that you choose goods from IP Australia’s pre-determined picklist. If you need a bespoke description of goods and services, you won’t be able to use TM Headstart.
2. TM Headstart is more expensive than a standard trade mark application using a pre-determined picklist. The total cost is $330 per class (instead of the usual $250 per class for pick-list trade mark applications). The class fee of $330 is broken down into:
Request fee of $200 payable upon filing the TM Headstart application. This fee is non-refundable, even if you decide not to proceed with the application.
Plus a fee of $130 to proceed with the final trade mark application after you receive your assessment.(There are also fees for amending your application by changing the trade mark representation or adding a new class).
3. Be careful of the timing. It is a quick process and when you do receive your initial report you need to be ready to respond within 5 business days.
4. Although the Examiner will let you know if they see any barriers to registration, they won’t give advice or recommend a course of action. You will need to contact us for this kind of help!
SIDE BAR: New Zealand has a similar system!
[1] Australia is a member of the Paris Convention which recognises a right of priority for a period of 6 months for trade marks filed in other member countries.