As a business owner, trade mark registration is a critical step for you to defend your brand identity. Like all areas of law, each country will have its own approach to assessing trade mark applications and registrability. Understanding these unique legal aspects is crucial, as it increases your chances of a successful trade mark registration whilst minimising potential issues with infringement. Importantly, a key consideration to note is the difference between filing systems across countries. This article will explain whether Australia uses a first-to-file or first-to-use trade mark registration system.
What are the First-to-File vs First-to-Use Systems?
Globally, trade mark registration systems fall broadly into two categories:
- ‘First-to-Use’; or
- ‘First-to-File’.
The ‘First-to-Use’ system grants trade mark rights to the party that can prove they were the first to use the trade mark in the marketplace. The United States is a notable example of a country that employs this system.
Contrastingly, the ‘First-to-File’ system awards trade mark rights to the first party that files a trade mark application. This is regardless of whether they have actually used the trade mark in the market. China is a notable example of a country that falls into this category.
Is Australia First-to-Use or First-to-File?
You may be interested in registering an Australian trade mark. If so, it is helpful to know that Australia will ultimately grant protection to whoever can prove that they used the trade mark first.
Despite this, some of the elements of the ‘First-to-File’ system are encouraged by the registration process in Australia. For example, the first person to file a trade mark application with IP Australia generally has priority over others who file later. This principle encourages prompt registration of trade marks and provides a clear framework for resolving conflicts between competing applicants.
Consider the following hypothetical: You and another party are seeking to register the same or similar trade marks. If you file your application first, you will typically gain priority, assuming your application meets all the necessary legal requirements. This aspect of the system emphasises the importance of timely trade mark filing for anyone looking to protect their brand assets in Australia.
Continue reading this article below the formWhat Should I Know About the First-to-Use System?
Despite the aforementioned filing priority, Australia still places greater weight on First-to-Use considerations when assessing potential trade mark issues between parties. This means that if you can demonstrate you were using the trade mark in the marketplace before another party filed a conflicting application, you may have grounds to oppose it. This concept of prior use serves as a protective measure for anyone who may not have immediately filed for registration but has established a brand presence in the market.
How Do These Considerations Affect Me?
In situations where there might be a dispute regarding who may have used a trade mark first, evidence of prior use becomes crucial. If you encounter such a circumstance, you must be able to illustrate your claims of use of the trade mark through documentation such as:
- advertising materials;
- sales evidence; and
- any other proof that shows you used the trade mark in the marketplace and that your business activities have gained a reputation associated with this mark.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
Registering your trade mark in Australia can be an effective way of protecting your brand identity. Australia follows a ‘First-to-Use’ system, meaning that whoever has been using the trade mark in the market first will gain trade mark rights. This is different to ‘First-to-File’, where the party who filed the trade mark application gains rights to it. Nonetheless, the overarching advice is to file for trade mark registration as early as possible. Early registration provides a more straightforward path to securing exclusive rights to your trade mark and might minimise the risk of eventual conflicts.
If you would like advice on when to file your trade mark application, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1300 544 755 or visit our membership page.
Frequently Asked Questions
Similar to countries like the United States, Australia uses the ‘First-to-Use’ registration system. This means that if you can prove you used the trade mark first in the market before another party with a conflicting application, you will be assigned the trade mark rights.
Although Australia follows ‘First-to-Use’ principles, you should not rely on this to gain trade mark protection. Instead, filing your application as soon as possible is recommended so that you can guarantee exclusive rights earlier.
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