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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.

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