Before filing a trade mark application in Australia, it is prudent to conduct thorough due diligence. This process helps identify potential conflicts, assess registrability, and inform your filing strategy — thus potentially reducing the risk of opposition, rejection of the application, or infringement liability. The following ten steps outline a pre-filing due diligence framework to clearing and protecting your trade mark in Australia.

Part 2 of our guide here discusses timing considerations for filing a trade mark in Australia.

Step 1: Define Your Trade Mark and Goods/Services

Begin by clearly identifying the exact form of your mark and the specific goods and/or services you intend to protect.

• Determine the mark type. The type of trade mark can be a word, logo, shape, image, sound, colour, moving image, aspect of packaging, or any combination of these.
• Draft a description of the goods and/or services that covers the goods/services that are in use or are intended to be used.
• Classify the goods/services under the Nice Classification system (45 classes total).
• Confirm the exact spelling, stylisation, and any colour details of the trade mark.

Step 2: Conduct a Preliminary Clearance Search

Search IP Australia’s trade mark register (ATMOSS / Trade Mark Search) for identical or confusingly similar marks. Such a search should encompass the trade marks set out below.

• Identical word marks across all relevant classes.
• Phonetically similar marks (same or similar sound).
• Visually similar marks, especially for logos and stylised words.
• Marks in the same, similar, or related classes.
• Pending applications as well as registered marks.

Step 3: Search Beyond the Register

Searching IP Australia’s trade mark register alone is insufficient. Conduct broader searches to uncover unregistered common law rights, which can still support a passing off claim or action under the Australian Consumer Law. Such unregistered common law rights may be found at the sources set out below.

• Business name registers via ASIC Connect and ABN Lookup.
• Domain name registers for names including “.com.au”, “.com”, “.net”, and other relevant TLDs.
• Social media handles across major platforms.
• Google and general internet searches for existing brand use.
• AI tools, such as Chat GPT, Grok, and Claude for existing brand use – one or more of these can also be used for searching through the trade marks register.
• Industry directories, trade publications, and relevant sector sources.

Step 4: Assess Registrability of the Trade Mark

Consider whether the trade mark is registrable under the Trade Marks Act 1995 (Cth). Common grounds for rejection include those set out below.

• Descriptiveness — marks that describe the goods or services (e.g., “Fresh” for fruit).
• Geographical appellations — particularly those directly describing the geographical origin of goods.
• Common surnames — marks consisting solely of a surname.
• Substantially identical or deceptive similarity — marks that are too close to existing registrations.
• Contrary to law or scandalous.
• Trade marks lacking distinctiveness without an acquired secondary meaning.

Step 5: Identify and Analyse Potential Conflicts

Undertake a structured assessment of possible relevant conflicting trade marks using the considerations set out below.

• The degree of visual, phonetic, and conceptual similarity.
• Whether the goods/services are the same, similar, or related.
• The likelihood of consumer confusion or deception in the marketplace.
• The strength, reputation, and distinctiveness of the prior trade mark.
• The channels of trade and typical consumer profile.

Step 6: Assess the Owner of Conflicting Trade Marks

Where a conflict is identified, assess the conflicting trade mark owner using the considerations set out below:

• Confirm whether the conflicting trade mark is still actively used in trade. A trade mark that is not used continuously for three or more years may be vulnerable to a non-use cancellation action under s 92 of the Trade Marks Act 1995.
• Investigate the ASIC records of the owner of the conflicting trade mark if the owner is not a natural person(s).
• Consider whether the conflicting trade mark may be available for licensing or assignment.
• Investigate the owner’s enforcement history and appetite for disputes

Step 7: Commission a Professional Search

A trade marks attorney can arrange a comprehensive professional search that goes beyond a basic ATMOSS search. Such a search may uncover trade marks or brands in Australia and globally that could be relevant. These may include those set out below.

• Phonetically and visually matching devices or logos.
• Relevant pending applications for registration and recently lapsed trade marks registrations.
• International registrations designating Australia via the Madrid Protocol.

Step 8: Consider International Implications

Filing in Australia first provides a foundation to build international trade mark protection. If your business has or anticipates export activities, consider freedom-to-operate investigations and trade mark availability in key overseas markets. The following considerations should be applied.

• Identify priority markets and assess registrability in those jurisdictions as soon as possible after the trade mark is adopted.
• Trade mark rights are territorial, meaning that a trade mark available in Australia may not be available in another country. If the intention is to expand in overseas markets, it is recommended that an international freedom-to-operate search is conducted before significant investment in branding or marketing to ascertain whether the mark is available not only in Australia but also in your commercial countries of interest.
• Consider filing via the Madrid Protocol to extend protection internationally from an Australian base application.
• Be aware of “first-to-file” vs. “first-to-use” systems in different countries. For example, Australia has a “first-to-use” system, while China has a “first-to-file” system.
• Factor in international filing timelines and convention priority periods (6 months from first filing). Once your Australian application is filed, you have a six-month window under the Paris Convention to file in overseas markets using your Australian filing date as the priority date.

Step 9: Determine Your Filing Strategy

Based on your search results and legal advice, confirm the following before filing:

• Whether to proceed with the trade mark as-is, modify it to reduce conflict risk, or abandon it.
• Which Nice Classification classes are to be elected — balance breadth with cost.
• The appropriate applicant entity: individual, company, or partnership. It is not possible to file the application in the name of a trust.
  • Whether to claim a Paris Convention priority date from a prior overseas application
  • Whether a series mark application is appropriate for minor variations

Step 10: Document Your Due Diligence

Maintain thorough records throughout the due diligence process. Good documentation should achieve the following.

• Records all searches conducted, databases used, and dates of searches.
• Captures the reasoning behind adoption of the mark and decisions made.
• Demonstrates good faith in the event of an opposition or infringement claim.
• Supports any future claim to priority or acquired distinctiveness.
• Provides a clear audit trail for attorneys and stakeholders.

Key Tip:

Pre-filing due diligence should be completed before investing in branding, packaging, or marketing materials. Discovering a conflict after commercial launch is far more costly — in both time and expense — than identifying and addressing it during the clearance phase. Engaging a registered trade marks attorney is strongly recommended.

Disclaimer: This article is intended as general information only and does not constitute legal advice. Trade mark law is complex and fact-specific. You should consult a registered trade marks attorney for advice tailored to your individual circumstances.