TRADEMARKS FILING AND PROSECUTION IN AUSTRALIA
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Australia may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark. Even unregistered trademark have some value under the common law known as passing off and it is considered to be an offence under the Competition and Consumer Act, 2010. This is the case when someone is using an unregistered trademark from very long time and has gained reputation in it. The Trade Marks Act, 1995 provides the aspects related to the filing, examination, and registration of a trademark.
|Relevant office||IP Australia|
|Nice classification||Yes (11th edition)|
|Documents required for filing a trade mark application||Name/ownership details and contact details. The address for service you provide will need to be either in Australia or New Zealand, a representation of the trade mark, a description of goods and/or services, a list of relevant classes, and the required fee.|
|Prosecution process||Filing publication of the mark in the trade mark journal opposition(within two months from the date of publication) registration renewal|
|Registration term||10 years from the date of application|
|Renewal term||10 years|
Trademarks searches in Australia
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Australia can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of IP Australia to check whether similar trademark to your brand is already registered in Australia or to find out who is the owner of the mark. Using Australian Trade mark search one can search trade mark classifications , this will help to find out which class goods and/or services fall into and to check whether someone else is using similar trade mark in your class.
Trademark word search edition of Australia follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Australia to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Australia. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Australia can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark application in Australia
A person may file multi-class or single class trademark applications in Australia.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary applications in Australia:
Ordinary trademark applications filed in Australia are applications without claiming any priority. There are three different ways to apply for a trademark in Australia through online services and each method has different fees prescribed. First method is pre-application service known as TM Headstart (before you apply using online services, it provides an assessment of your application), second method is standard online application process, third method is the new and improved Trade Mark Assist (it allows to explore your trade mark and identify the goods and services you wish to protect). Multi class trademark applications may also be filed in Australia. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Australia/Convention trademark applications Australia:
A priority trademark application may be filed in Australia. A priority trademark application should be filed in Australia within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Australia within six months of after the date on which the application was made in the Convention Countries.
Trademarks classes for goods and service
Australia follows the nice classification of classes. IP Australia uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
The trade mark classification search provides the list of goods and services for which one can choose to register their trade mark. The database on the IP Australia also contains the snapshots of the types of goods and services that fall in each class along with the headings. There are various videos available on official website for the ready reference.
Trademark examination in Australia
Once the application is submitted, the application will be examined by the examiner. The examiner will check that all the correct information is available and all the legislative requirements are met or not. It usually takes at least three to four months for examination process after the submission of the application.
Once the application is ready for acceptance, it will be accepted and published in the trademark journal for the observation of third parties.
Trademark opposition in Australia
Once the application successfully completes the examination process the trademark will be published in the trade mark journal and will be open for opposition. Any opposition must be file within two months of the trademark being advertised as accepted in the Australian official journal of trade marks. The first step is to file a notice of opposition. The second step is to file statement of grounds and particulars which is to be file within one month of the notice of opposition. After this the applicant is given one month time after the copy of statement of grounds and particulars are given, to defend the opposition. If a notice of intention to defend is filed, the next step is evidence stage. A decision on the opposition is made after the evidence stage.
A cooling off period may also be requested after a statement of grounds and particulars has been filed but before a decision of opposition. This period is requested usually for the negotiations between the parties. A cooling off period is of six months. This cooling off period can also be extended if both the parties agree by six months.
Trademark registration in Australia
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of filing of the application and the registration certificate is issued.