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Legal framework

Domestic law

What is the primary legislation governing trademarks in your jurisdiction?

The primary legislation for protecting trademarks in Australia is as follows:

  • the Trademarks Act 1995;
  • the Trademarks Regulations 1995; and
  • the Australian Consumer Law.

International law

Which international trademark agreements has your jurisdiction signed?

Australia is a signatory to the following IP rights treaties:

  • the Paris Convention for the Protection of Industrial Property;
  • the Agreement on Trade-Related Aspects of Intellectual Property Rights;
  • the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
  • the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
  • the Singapore Treaty on the Law of Trademarks; and
  • the Trademark Law Treaty.

Regulators

Which government bodies regulate trademark law?

IP Australia.

Rights and protection

Ownership

Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?

Ownership is determined on a first-to-use basis or, if there is no use before filing, then on a first-to-file basis. 

Unregistered trademarks

What legal protections are available to unregistered trademarks?

As Australia is a common law country, it is possible to protect an unregistered trademark under the tort of passing off. Unregistered trademarks also enjoy protection under the Australian Consumer Law (found in Schedule 2 of the Competition and Consumer Act 2010), which prohibits misleading or deceptive conduct in trade and false or misleading representations in relation to goods and services.

How are rights in unregistered marks established?

Rights in unregistered trademarks are contingent on the reputation of the relevant mark. The extent of the reputation of the relevant mark may be substantiated through evidence. Such evidence commonly includes:

  • sales revenue figures;
  • promotional expenditure figures;
  • examples of how the mark has been used and promoted;
  • third-party evidence of the reputation of a mark; and
  • survey evidence of awareness of the mark (careful preparation of survey questions is crucial to prevent bias in responses).

Are any special rights and protections afforded to owners of well-known and famous marks?

Section 120(3) of the Trademarks Act provides a basis for taking action for infringement of trademarks which are well known where:

  • the asserted infringer uses a substantially identical or deceptively similar trademark;
  • the goods or services are not of the same description or closely related to the goods or services for which the well-known mark is registered;
  • the infringing mark would indicate a connection between the unrelated goods or services and the registered owner of the well-known mark; and
  • the interests of the registered owner are likely to be adversely affected.

To what extent are foreign trademark registrations recognised in your jurisdiction?

Foreign registrations afford no protection for a trademark in Australia. However, a foreign application or registration can afford a claim for convention priority in Australia when this is filed within six months of the date of filing the first foreign application. Further, foreign registration of a trademark may persuade an examiner that a trademark is capable of distinguishing where there is some doubt as to the distinctiveness of the trademark.

Registered trademarks

What legal rights and protections are accorded to registered trademarks?

The owner of a registered trademark enjoys the exclusive right to:

  • use or authorise use of the trademark in respect of the goods or services for which the mark is registered; and
  • take action for infringement where an infringer uses, as a trademark, a sign that is substantially identical or deceptively similar to the registered trademark, in relation to:
    • goods or services in respect of which the trademark is registered; or
    • goods or services of the same description or which are closely related, where the use of the infringing mark is likely to deceive or cause confusion.

Who may register trademarks?

Any person (which includes a legal person such as a company) may apply to register a trademark in respect of goods or services if:

  • the person claims to be the owner of the mark; and
  • in respect of the relevant goods or services, the person:
    • is using or intends to use the mark;
    • has authorised or intends to authorise use of the mark by another person; or
    • intends to assign the mark to a body corporate about to be constituted for use by that company.

What marks are registrable (including any non-traditional marks)?

Trademarks which are registrable in Australia include any sign or combination of signs. A ‘sign’ is defined non-exhaustively as including any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

Certain signs are prohibited from registration, either by operation of the Trademarks Act and Trademarks Regulations or as a result of other legislation. For example, images of the Swiss Cross may not be registered as part of a trademark without the minister's consent, and marks including the word ‘bank’ and covering financial services cannot be registered without consent from the Australian Prudential Regulation Authority.

Can a mark acquire distinctiveness through use?

Theoretically, any mark ‒ even a generic description of the goods ‒ could be registrable in Australia, provided that there has been sufficient use of that mark. The amount of use required depends on how non-distinctive the mark is, which determines the nature of the distinctiveness objection raised.

If the mark is to some extent inherently adapted to distinguish, but not sufficiently distinctive for registration, the applicant must show that the mark is capable of distinguishing. In such circumstances, the applicant is entitled to rely on evidence of its use of the mark after the filing date of the application. Foreign use and registration may also be considered supportive.

However, if the mark is deemed to have no distinctive character, then use must show that the mark was distinctive as of the filing date of the application. Generally, a more significant period of use is required to demonstrate distinctiveness in such circumstances, including third-party evidence corroborating the distinctive character of the mark.

On what grounds will a mark be refused registration (ie, absolute and relative grounds)?

A trademark may be refused registration on examination on either relative or absolute grounds. An objection may be raised if the mark:

  • contains or consists of proscribed or prohibited signs (eg, the Australian coat of arms);
  • cannot be represented graphically;
  • is not capable of distinguishing the relevant goods or services because it is descriptive or otherwise non-distinctive;
  • is scandalous or its use is contrary to law;
  • is likely to deceive or cause confusion; or
  • is substantially identical or deceptively similar to a trademark which is the subject of an earlier application or registration and which covers identical or similar goods or services.

Are collective and certification marks registrable? If so, under what conditions?

Collective and certification trademarks may be registered provided that no ground for rejection applies.

A collective mark may be registered by an association, including an unincorporated association. Any member of that association may use the collective trademark in accordance with the rules of association. A collective mark may not be assigned and, in an infringement action, the association may take into account any damage or loss of profits sustained or incurred by the members of the association as a result of the infringement.

A certification mark may also be registered once a copy of the rules governing use of the mark is filed with the Trademarks Office and approved by the Australian Competition and Consumer Commission (ACCC), which must also publish the rules. Approval of the ACCC is required in order to vary the certification rules or assign the ownership of the mark.

Filing and registration

Filing procedure

Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?

No power of attorney or other supporting documentation is required.

What information and documentation must be submitted in a trademark registration application?

In order to file an application, the applicant must supply the following details:

  • the mark;
  • the goods or services covered;
  • the applicant’s name and address; and
  • the number and date of filing of any application from which convention priority is claimed. 

What rules govern the representation of the mark in the application?

The mark must be capable of being represented graphically. The graphical representation may include both an image and a description of the mark which is entered as an endorsement against the application, along with the following:

  • If the application is a series mark, the application should include a representation of each mark in the series.
  • A three-dimensional mark must be represented in a way that illustrates each feature of the mark. and
  • If the mark includes words of a language other than English, the application should include a translation into English.

Are multi-class applications allowed?

Yes.

Is electronic filing available?

Yes.

What are the application fees?

For one trademark (not in series), the official fee is A$250 per class if the pre-defined list of goods or services is used, or A$330 per class otherwise. Series mark applications cost A$400 per class if the pre-defined list of goods or services is used, or A$480 per class otherwise.

Priority

How are priority rights claimed?

Priority may be claimed under the Paris Convention for a period of six months from a trademark application filed in another member state of that convention. Convention priority may also be claimed from countries which are not members of the Paris Convention if they are signatories to the Agreement on Trade-Related Aspects of Intellectual Property Rights, per Article 4 on most-favoured nation treatment.

To claim priority, the applicant provides details of the number and date of filing of the application from which convention priority is claimed. Evidence of proof of entitlement to the convention priority is rarely, if ever, required as part of the examination of the application, although the registrar has power to request that such evidence be provided.

Searches

Are trademark searches available or required before filing? If so, what procedures and fees apply?

It is recommended that trademark searches be completed before filing an application to clear the mark for use and registration. The fees charged for completing searches vary from firm to firm, but no official fees apply as searches are not typically completed through the Trademarks Office.

Examination

What factors does the authority consider in its examination of the application?

Initially, the examiner will check the application to ensure that certain formalities are correct, including:

  • the name and address of the applicant; and
  • the goods and services, to ensure they are classified in accordance with the Nice Classification for Goods and Services.

The examiner will also then consider whether one of the grounds for objection applies. An objection will be raised if the mark:

  • contains or consists of proscribed or prohibited signs (eg, the Australian coat of arms);
  • cannot be represented graphically;
  • is not capable of distinguishing the relevant goods or services because it is descriptive or otherwise non-distinctive;
  • is scandalous or its use is contrary to law;
  • is likely to deceive or cause confusion; or
  • is substantially identical or deceptively similar to a trademark which is the subject of an earlier application or registration and which covers identical or similar goods or services.

Does the authority check for relative grounds for refusal (eg, through searches)?

If an earlier application or registration exists which is for a mark which is substantially identical or deceptively similar to the mark applied for, and which covers the same or similar goods and services, the examiner will raise an objection which will need to be resolved before the application is accepted.

If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?

If an objection to the application is raised, an applicant is given 15 months to resolve the objection. This deadline is extendible.

The approach to addressing an objection depends on the nature of the objection raised. The applicant is entitled to file written submissions arguing against the objection.

If facing a distinctiveness objection, the applicant may file evidence in support of the application to show that the mark has acquired capacity to distinguish.

If the application is blocked by an earlier application or registration, the applicant may file evidence to show that the applicant is a prior continuous user or honest concurrent user, or that there are other circumstances which support acceptance. The applicant may also consider other options for overcoming the objection, including challenging earlier marks to make way for acceptance or obtaining letters of consent.

In the event that an objection is maintained, the applicant is entitled to request a hearing before a delegate of the registrar.

Can rejected applications be appealed? If so, what procedures apply?

An appeal can be made to the Federal Circuit Court of Australia or the Federal Court of Australia against a decision to reject an application. The Federal Court Rules apply.

Registration

When does a trademark registration formally come into effect?

The trademark rights inure to a registration once the examination process and opposition period are complete. The rights accrue, including the right to sue for infringement, from the priority date of the application, which will be either the filing date or the convention priority date of the application or its parent if it is a divisional application.

What is the term of protection and how can a registration be renewed?

The term of protection is 10 years and the trademark may be renewed by paying renewal fees by the deadline. There is a late renewal period of six months, although a late fee applies.

What registration fees apply?

There is no registration fee payable (only application fees).

What is the usual timeframe from filing to registration?

A minimum of seven-and-a-half months must elapse from filing before it will be registered to account for later filed applications claiming earlier convention priority. If no objections have been raised or oppositions lodged, the typical timeframe to registration is between eight and 10 months.

Opposition

Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?

Third parties may oppose an application on the following bases:

  • the same grounds as may be raised at examination (except on the grounds of graphical representation);
  • if the applicant is not the common law owner of the trademark;
  • if the application was accepted based on prior continuous use, on the basis that the opponent or another party has earlier use of a substantially identical or deceptively similar trademark for similar or closely related goods or services;
  • if the applicant does not intend to use the mark;
  • if, owing to the reputation of another trademark, the use of the applied-for trademark would be likely to deceive or cause confusion;
  • if the trademark contains a false geographical indication;
  • if the application was amended contrary to the Trademarks Act or accepted based on false material particulars; or
  • if the application was made in bad faith.

The opponent initially files a notice of intention to oppose before the end of the two-month opposition period and must then file a statement of grounds and particulars within one month. If these documents are not filed, the notice of opposition is taken not to have been filed.

Once the statement of grounds and particulars is assessed and considered adequate, it is given to the applicant. The onus then shifts to the applicant to file its notice of intention to defend the application within one month.

The onus then reverts to the opponent to file evidence in support within three months of being given the notice of intention to defend. Once filed and given to the applicant, it has three months to file evidence in answer. The opponent then has two months to file evidence in reply.

Once the evidence rounds are complete, the parties are given an opportunity to request a hearing or a decision on the evidence and any written submissions made.

What is the usual timeframe for opposition proceedings?

Approximately 18 months to two years.

Are opposition decisions subject to appeal? If so, what procedures apply?

Yes. An appeal can be made to the Federal Circuit Court of Australia or the Federal Court of Australia by the applicant or opponent. An appeal is de novo and the Federal Court Rules apply.

Removal from register

Non-use cancellation

Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?

A trademark may be removed where:

  • the applicant for registration of the trademark had no intention in good faith to use the mark and has not put the trademark to use; or
  • the mark has not been used in good faith for a continuous period of three years, ending one month before the date on which the non-use application is filed.

An application to remove a mark for lack of intention to use (as above) may be made at any time. If the mark has been used after the filing of the application, then this is likely to defeat a removal application in spite of there being no intention to use the mark at the date of filing.

An application to remove a mark on the basis of a continuous three-year period of non-use (as above) may be made only after five years have elapsed from filing of the application.

If removal of the registration is opposed, then formal opposition proceedings apply. The procedure is similar to standard opposition proceedings.

The opponent initially files a notice of intention to oppose and must then file a statement of grounds and particulars within one month.

Once the statement of grounds and particulars is assessed and considered adequate, it is given by the registrar to the removal applicant, which must file its notice of intention to defend the removal application within one month.

The onus then reverts to the opponent to file evidence in support within three months of being given the notice of intention to defend. Once filed and given to the removal applicant, it has three months to file evidence in answer. The opponent then has two months to file evidence in reply.

Once the evidence rounds are complete, the parties are given an opportunity to request a hearing or a decision based on the evidence and any written submissions.

Revocation

On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?

Both the registrar and the ‘prescribed courts’ ‒ the Federal Court, Federal Circuit Court and supreme courts of each Australian state and territory ‒ have the power to revoke a registration in certain circumstances.

The registrar may revoke the registration of a trademark if he or she is satisfied that:

  • the trademark should not have been registered; and
  • it is reasonable to revoke the registration.

Typically, this power will be exercised only where there has been a serious error of judgement or procedure during the application stage which indicates that the mark should not have been registered. For example, if there is an earlier-filed application or registration which clearly should have blocked acceptance of the mark for registration, the registrar may be prepared to exercise the revocation power.

The prescribed courts also have power to revoke a registration (referred to as a ‘cancellation proceeding’) where a person aggrieved by the registration or the registrar makes an application under the following grounds:

  • where a condition of registration has been contravened;
  • where the mark has become a generic description or was the name of an article or substance formerly protected under a patent;
  • on any of the opposition grounds;
  • where the registration was obtained based on fraud, false suggestion or misrepresentation; or
  • where the mark has become likely to deceive or cause confusion.

Who may file a request for revocation and what is the statute of limitations for filing a request?

The registrar's power to revoke may be exercised only within the first 12 months of registration. There is no such limitation on the prescribed courts.

What are the evidentiary and procedural requirements for revocation proceedings?

An application for revocation before the registrar is typically made by way of letter. If the registrar is willing to entertain the application and intends to revoke the registration, his or her delegate will typically give the owner of the registrar an opportunity to make submissions or request a hearing before the mark is revoked.

An application for revocation before the Federal Court or the Federal Circuit Court is governed by the court rules. All of the usual rules of evidence apply.

Appeal

What is the appeal procedure for cancellations or revocations?

In respect of contested non-use proceedings, the parties have an automatic right of appeal of a decision of the delegate of the registrar to the Federal Circuit Court or the Federal Court. The appeal is de novo and the court rules apply.

In respect of decisions as to whether to exercise the registrar's discretion to revoke a registration within the first 12 months, an appeal can be made to the Federal Court or the Federal Circuit Court.

Cancellation decisions of the Federal Court or the Federal Circuit Court can be appealed to the Full Federal Court.

Surrender

What is the procedure for surrendering a trademark registration?

The surrender of a trademark in Australia is referred to as ‘cancellation’ of the mark. A trademark registration may be cancelled by way of letter, in whole or part, from the owner or its agent to the Trademarks Office.

Enforcement

Jurisdiction

Which courts are empowered to hear trademark disputes?

Trademark disputes may be heard in a prescribed court by a single judge. The ‘prescribed courts’ are the Federal Court, Federal Circuit Court and supreme courts of each Australian state and territory. In practice, however, most trademark cases are heard in the Federal Court.

Actions

What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?

The Trademark Act outlines the circumstances in which a trademark owner has a right to civil relief for trademark infringement. Broadly, Section 120 outlines three categories of infringement:

  • infringement in relation to goods or services for which the mark is registered;
  • infringement in relation to goods or services that are of the same description or closely related to those for which the mark is registered. Defendants to this action may avoid liability by establishing that their use of the mark is unlikely to deceive or cause confusion; and
  • infringement in relation to goods or services that are unrelated to those for which the mark is registered. This action applies only to trademarks that are 'well known' in Australia, whose use is likely to indicate a connection between the unrelated goods or services and the registered owner of the trademark.

To establish infringement under each of Section 120(1), Section 120(2) and Section 120(3), the defendant must use the sign as a trademark in Australia and the sign used must be substantially identical or deceptively similar to the registered trademark.

Part 14 of the Trademark Act outlines a series of criminal offences in relation to registered trademarks, including the following:

  • Section 145 ‒ falsifying or removing a registered trademark.
  • Section 146 ‒ falsely applying a registered trademark.
  • Section 147 ‒ manufacturing a die, block, machine or instrument that is likely to be used to commit an offence.
  • Section 148 ‒ selling, possessing or importing goods with false trademarks.

A characteristic of the provisions of Part 14 is that they have differing fault elements which must be proven depending on the offence. These elements may be intention, knowledge, recklessness or negligence.

Moreover, Section 151 prohibits the making of false representations that a trademark (or part of a trademark) is registered, or as to the rights conferred by registration, without reasonable grounds.

Who can file a trademark infringement action?

Actions for trademark infringement are usually filed by the registered trademark owner or, with consent of the owner, by an authorised user. Authorised users may also bring an action without consent where the registered owner has failed to bring an action within two months of being requested to do so by the authorised user.

What is the statute of limitations for filing infringement actions?

In all Australian jurisdictions (except the Northern Territory) the limitation period is six years from the date on which the first act of infringement arose. In the Northern Territory, the relevant period is three years.

What is the usual timeframe for infringement actions?

From the commencement of court proceedings to receipt of judgment, a standard Australian trademark infringement case in the Federal Court generally takes between 12 and 18 months. In 2016 the Federal Court introduced concise statement procedures for expedited hearings, although this process is unlikely to be suitable for factually complex cases.

Injunctions

What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?

Under the Trademark Act, injunctions may be granted by a court subject to any condition that the court deems fit. These include interlocutory injunctions, which may be awarded before trial to prevent the continuing infringement of the trademark owner's rights.

Broadly speaking, interlocutory injunctions will be awarded where:

  • there is a serious question to be tried;
  • the trademark owner is likely to suffer ongoing injury for which damages will be inadequate; and
  • the balance of convenience favours grant.

Specific to trademarks, the court may consider factors such as:

  • the potential effect of an injunction on third parties;
  • the flagrancy of the defendant's conduct;
  • the ability of either party to meet an award of damages;
  • the owner's delay in bringing the injunction application; and
  • the need to protect the goodwill of established businesses.

Where an interlocutory injunction is granted and subsequently it is found that it should not have been ordered, the plaintiff will ordinarily be required to pay compensation for any damage that the injunction may have caused the defendant ‒ or possibly third parties ‒ during its period of operation.

Remedies

What remedies are available to owners of infringed marks? Are punitive damages allowed?

The civil remedies available for trademark infringement include:

  • interlocutory and final injunctions;
  • damages or account of profits; and
  • orders for delivery up of the infringing goods.

Additional (punitive) damages may be awarded in cases where the defendant's conduct has been particularly flagrant or where there is seen to be a need for deterrence.

Customs enforcement

What customs enforcement measures are available to halt the import or export of infringing goods?

Under the Trademark Act, a registered trademark owner (or in certain circumstances an authorised user) can take steps to require the Australian Customs and Border Protection Service (ACBPS) to intercept and seize goods which appear to infringe its registered trademark. Once goods have been seized, the designated owner of the goods (and the registered trademark owner) will be notified. The designated owner has a limited period to make a claim for release of the goods. If such a claim is made, the registered owner must then commence an infringement action. If an action is not commenced, the ACBPS will release the seized goods.

However, the ACBPS’s chief executive officer may require the trademark owner to pay the costs of seizing the infringing goods. This may be in the form of an undertaking to repay the costs of seizure or payment of a security in an amount that the ACBPS chief executive officer considers sufficient to repay its expenses.

Defence

What defences are available to infringers?

Various acts which do not constitute infringement are outlined in Sections 122 to 124 of the Trademark Act.

Where all of the elements for infringement have been established, a defendant may rely on a number of defences outlined in Section 122 of the Trademark Act:

  • Section 122(1)(a) ‒ the trademark is the defendant's name or the name of its place of business, and is used in good faith.
  • Section 122(1)(b) ‒ the trademark is used descriptively, in good faith, to indicate a characteristic of the goods or services (eg, quality or geographical origin).
  • Section 122(1)(c) ‒ the trademark is used in good faith to indicate the intended purpose of the goods (eg, as an accessory to branded goods).
  • Section 122(1)(d) ‒ the trademark is used for the purpose of comparative advertising.
  • Section 122(1)(e) ‒ the defendant is exercising a right to use a trademark as granted under the Trademark Act. This can include registration rights or authorised user rights.
  • Sections 122(1)(f) and 122(1)(fa) ‒ the defendant would obtain a trademark registration if the person were to apply for it.

Section 123 deals with situations where a trademark has been applied for by or with the consent of the registered owner. The defence applies in relation to use of similar goods or similar services and could apply to the sale of second-hand goods and to parallel imports.

Additionally, Section 124 provides a 'prior use' defence where, broadly speaking, the defendant can establish that it has been using the mark from a period before the owner commenced using or registered its mark. This prior use must have been continuous and constitute use “as a trademark”. 

Appeal

What is the appeal procedure for infringement decisions?

The Federal Court (particularly the full Federal Court) has jurisdiction to hear appeals from any judgment or order made by another prescribed court. These include judgments of state courts, which may not be appealed to the usual appellate body. Further appeals to either the full Federal Court or the High Court of Australia may be brought only with the special leave of that court. 

Assignment and licensing

Assignment

What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?

Any legal document which effects a legal transfer of a trademark from one party to another will be sufficient for the purposes of transferring ownership. Typically, however, ownership of a trademark is transferred by operation of a deed of assignment or assignment agreement.

Assignment of a trademark may be a partial assignment in respect of the goods or services covered by the application or registration, and may be with or without the goodwill of the business concerned in the relevant goods or services.

The assignment of a trademark operates at law and an unrecorded assignee still benefits from the rights afforded by the trademark. However, it is mandatory to record an assignment in Australia and, moreover, the exclusive right to use the mark enjoyed by the assignee commences only from the date on which the assignment is recorded. As a result, an assignee is not entitled to take action for infringement of a registration in respect of conduct before recordal of the assignment. However, this entitlement is considered under Australian law to be a chose-in-action, which is also assignable. Accordingly, a deed of assignment typically also includes an assignment of this right.

Licensing

What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?

The Trademark Act prescribes no formal requirements for a valid licence. Instead, the Trademark Act recognises 'authorised users', which are granted broad rights under the act ‒ including the right to use the trademark, bring infringement proceedings and permit others to make use of the trademark. Licensees which are not considered authorised users will not be recognised as possessing the same rights.

To meet the definition of 'authorised user' in Section 8 of the Trademark Act, a licensee must use the trademark under the control of the owner of the trademark. Non-exhaustively, quality control or financial control will be sufficient to meet this requirement (as discussed below).

Importantly, although there is no obligation for licensees to meet the definition of an ‘authorised user’, only authorised use will be regarded as use by the registered owner. This may have significant consequences for trademark owners in defending removal actions for non-use, because use by licensees will not be sufficient.

What provisions are typically included in a licensing agreement (eg, quality control clauses)?

In order to meet the definition of an ‘authorised user’, it is common for licensing agreements to specify exactly how control will be exercised by the trademark owner. Typically, this is done through a quality control clause which outlines the standards that particular goods or services must meet before the trademark may be attached. Additionally, there may be certain inspection requirements to ensure those standards are being met.

Due to the breadth of powers awarded to authorised users under the Trademark Act, it is also common for licencing agreements to specifically exclude certain rights. For example, a licensor may wish to exclude the ability of a licensee to sublicense the mark to third parties or challenge its validity or ownership.

Security interest

Can a security interest be registered over a trademark? If so, what rules and procedure apply?

A security interest may be registered over a trademark pursuant to the Personal Property Securities Act 2009. This act creates a separate searchable database which permits registration of any secured interest over property, including intangible property.

It is also possible to record a claimed interest against the Trademarks Register, which may arise from a secured interest over a trademark application and registration. The effect of recording a claimed interest is that the party claiming the interest will be notified of any attempt to deal in the property ‒ for example, if a party applies to record an assignment of the mark. If this occurs, the claimed interest recorded does not prevent recordal of the assignment, but the Trademarks Office delays recording the assignment for one month to allow the party claiming the interest to seek an order from the Federal Court to stay the recordal and unwind the assignment if it is inconsistent with its interest.

Related rights

Related IP rights

Can trademarks be protected under other IP rights (eg, copyright, designs)?

Logo trademarks, some shape marks and sound marks may be protected if they are considered artistic or musical works under the Copyright Act 1968 to the extent that they meet the threshold requirement of originality to attract copyright. However, such copyright is enforceable only if there has been copying and if a substantial part ‒ assessed qualitatively ‒ of the relevant work has been copied.

Online issues

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

Use of trademarks online is protected by the same mechanism for protecting trademarks used offline. Accordingly, an infringement action may be taken under the Trademarks Act; or where the use of the mark is misleading or deceptive, an action may arise under the Australian Consumer Law or for passing off at common law.

In respect of domain names, the ‘.au’ Dispute Resolution Policy (auDRP) provides a basis for taking action to recover domain names from cyber squatters. This policy is similar to the Uniform Domain Name Dispute Resolution Policy (UDRP); although, unlike the UDRP, the auDRP requires the plaintiff to demonstrate only that the domain name has been either used or registered in bad faith. The two additional elements of a UDRP complaint ‒ that the owner does not have a legitimate interest in the domain name and that the domain name is confusingly similar to the plaintiff's trademark ‒ also apply.

The Australian Domain Name Regulator also has a number of policies which govern the operation and entitlement to own domain names in the Australian domain name space. Moreover, where a domain name is used as a trademark, it may give rise to an action for infringement; if the use of the domain name is misleading, there may also be an action available for breaches of the prohibition on misleading and deceptive conduct in the Australian Consumer Law and for passing off at common law.