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Are you an overseas business owner looking to trade in Australia? In that case, you must protect your intellectual property in Australia. This includes registering a trade mark in Australia, as your trade mark in your home country will not protect you here without additional steps. In this article, we answer some frequently asked questions from overseas business owners regarding trade mark registration in Australia.

What is the Australian Trade Mark Office?

The national trade marks office of Australia is IP Australia. You can access the IP Australia website here. The office maintains a searchable public database of trade mark applications and registrations in Australia.

The relevant legislation relating to the administration of trade mark rights in Australia are the Trade Marks Act 1995 (Cth) and the Trade Marks Regulations 1995 (Cth).

What Kind of Trade Mark Application Can I File in Australia?

IP Australia allows standard, certification, defensive and collective trade mark applications. Signs registrable as trade marks include words and logos, as well as non-traditional trade marks such as colours, scents, shapes, and sounds. 

Series trade marks are allowed and valid if the trade marks within the series resemble each other in material particulars. They can only differ in statements regarding the goods or services claimed, statements or representations as to number, price, quality or names of places, or the colour of any part of the trade mark.

Is Australia a Madrid Protocol Member?

Australia became a party to the Madrid Protocol on 11 July 2001. Overseas applicants, therefore, have two routes to securing trade mark protection in Australia: 

1) filing a direct national application; or 

2) filing an international application via the Madrid Protocol and designating Australia.

Does Australia Permit Priority Claims?

Australia is a party to the Paris Convention and therefore allows priority claims from applications first filed in another convention country within the preceding six months. Partial and multiple priority claims are also allowed. It is usually not necessary to provide a copy of the priority application, but IP Australia may request it later if required.

Does Australia Use a Classification System?

The 11th edition of the NICE classification came into force in Australia on 1 January 2017. Applicants can provide a custom specification or use IP Australia’s ‘pick list’ of pre-approved goods and services (available for searching here).

IP Australia generally allows broad items in specifications, with wording such as “software” in class 9, “clothing” in class 25, and “retail services” in class 35 all being acceptable.

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What Is The Trade Mark Application Process?

After applying, a substantive examination will occur within approximately 4-5 months. If any issues are raised during the examination, IP Australia will issue an examination report detailing the objections you must overcome for the application to proceed to acceptance.

If there are no objections, or if they are raised but subsequently overcome, the application will then proceed to acceptance. It will be advertised for a two month period to allow third parties the chance to oppose the registration of the trade mark. Assuming no opposition occurs, the application will then proceed to registration.

If no objections or oppositions arise, the entire process from filing through to registration takes approximately 7.5 months.

What Is The Examination Procedure?

IP Australia examines trade mark applications on both absolute and relative grounds. Options available for overcoming objections in Australia include:

  • filing legal arguments; 
  • providing evidence of use (to demonstrate either acquired distinctiveness or prior continuous or honest concurrent use in respect of a cited trade mark); 
  • providing a letter of consent from the owner of a cited trade mark;
  • removing a cited trade mark for non-use; and
  • amending the specification of goods and services to resolve the objection.

Suppose your trade mark application is facing objection regarding only a portion of the goods or services covered. In that case, it is possible to divide the application. This allows the acceptable portion to proceed to acceptance as a separate application while the applicant works to resolve the objections for the remaining portion.

What Deadlines Should I Be Aware Of?

Applicants have 15 months from the date of the examination report to overcome any objections raised. You should note that this is an acceptance deadline rather than a response deadline. Therefore, any response should be filed well in advance of the deadline. This allows IP Australia time to consider it (usually 20 working days). 

Extensions of time are available subject to official fees. You can obtain the first six months of extension relatively easily without providing reasons. Subsequent extensions (beyond 21 months from the date of the first examination report) require a declaration justifying the requirement for an extension.

Suppose an application is facing an objection on the basis of a similar trade mark. In that case, it is possible to obtain a deferment period in certain circumstances (without payment of official fees). For instance, these circumstances include:

  • the trade mark is in the renewal grace period, is a pending application or is subject to a non-use application;
  • the applicant is seeking consent from the owner of the trade mark; or 
  • the applicant is preparing evidence of prior continuous or honest concurrent use. 

The period of deferment granted is usually six months, or until the circumstances justifying the deferment have ended (such as a pending trade mark proceeding to registration).

Can I Renew My Trade Mark?

Australian trade marks are registered for an initial 10-year period. You can renew them indefinitely for subsequent 10-year periods subject to payment of registration fees. 

Trade mark registrations in Australia are subject to a use requirement to be valid. A trade mark owner is not required to actively provide evidence of use of the trade mark to maintain its registration (such as the requirement in the United States following registration). However, they may be required to do so if a third party challenges the registration on the grounds of non-use.

A third party can apply to remove a trade mark from the register at any time on the grounds that there is no intention to use the trade mark. In addition to this, a trade mark becomes vulnerable to removal if you do not use it for three years and:

  • for trade marks filed before 24 February 2019, five years have passed since the filing date of the application for registration; or
  • for trade marks filed on or after 24 February 2019, three years have passed since the registration date.

How Can I Enforce A Trade Mark in Australia?

You can enforce an Australian trade mark against unauthorised use by commencing trade mark infringement proceedings. In addition to this, both registered and unregistered trade marks have protection through:

  • the misleading and deceptive conduct provisions of the Australian Consumer Law (being schedule 2 to the Competition and Consumer Act 2010 (Cth)); as well as
  • the common law tort of passing off.

Key Takeaways

If you are an overseas business owner looking to trade in Australia, you must take steps to protect your trade marks. While the application process may look similar to that in your home country, the Australian trade mark process can be complex, and it can be difficult to ensure that you have fully protected your intellectual property. If you want to bring your brand to Australia, LegalVision’s experienced intellectual property lawyers can help you protect your trade marks. Contact us on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

I have a trade mark in another country. Will that protect me in Australia?

No, an overseas trade mark will not protect you in Australia. You will need to either file a trade mark in Australia or utilise the Madrid protocol process.

Is the trade mark process in Australia similar to the process in other countries?

There may be some similarities between the trade mark process in Australia and other countries. However, Australia has regulations and peculiarities that may be different to your home country. We suggest seeking legal advice to ensure you complete the process correctly.

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