Registration of marks
Trademark applications in Australia are usually completed online and the government cost is calculated per class, ranging from around A$250 to A$480 per class (depending on the method chosen and the type of mark). As of October 2016, no separate fees are payable upon registration of a mark. Trademark registrations must be renewed every 10 years, at a government cost of around A$400 per class.
Applications are typically examined within three to four months (although it is possible to apply for an expedited examination). The examiner will consider the application to confirm that it meets the TMA registrability requirements and all relevant formalities. If accepted by the examiner, the trademark will be advertised and open for opposition for two months. If no oppositions are received, the mark will proceed to registration with the priority date being the date of the application. If the application receives an adverse examination report, the applicant has 15 months from the date of the report for the application to be accepted (that is, to respond to the examiner’s objections and have the examiner consider this response and reconsider the application in light of the response), with extensions of three or six months available upon payment of additional fees.
As Australia is a signatory to the Madrid Protocol, applicants for, or owners of, registered trademarks in Australia can use their applications or registrations as a basis to apply for international protection in any of the Madrid Protocol contracting countries. Applications are assessed by the relevant national offices and, if successful, marks are granted effectively the same protection in the chosen countries as they have in Australia. As with national marks, international trademark applications may be filed through IP Australia. Conversely, trademark owners overseas can designate Australia in their Madrid Protocol international trademark applications. These applications are assessed by the Trade Marks Office in Australia in the same way as national applications and, if granted, registration gives the overseas owner the same protection as if they had applied for a national mark in Australia. Use of the Madrid Protocol for international filings can be significantly cheaper and easier than applying for national trademarks in each country.
Australia is also a signatory to the Paris Convention, so that applications first filed in Australia can be filed in another Paris Convention country within six months, claiming the filing date from Australia. Foreign applicants can file in Australia in the same way. This means that no Australian application can progress to registration in less than six months to allow for priority claims.i Inherent registrability
To be registrable under the TMA, a trademark must be a ‘sign used or intended to be used to distinguish the goods or services dealt with or provided in the course of trade by a person’ from the goods or services provided by another person.
The definition of a ‘sign’ in the TMA is extremely broad. A sign can be any of, or any combination of, the following: letter, word, name, signature, numeral, device, brand heading, label, ticket, aspect of packaging, shape, colour, sound or scent.
To be registrable, a trademark must therefore satisfy the requirement of being capable of distinguishing – either because it is inherently distinctive, or because it has acquired distinctiveness through use so that in practice it serves to distinguish the goods or services of the owner.
A note to Section 41(1) of the TMA provides that a trademark is not likely to be inherently distinctive if it consists wholly of a sign that is used to indicate characteristics of the goods or services or the time of production of the goods or rendering the services. This guidance is considered in the context of the goods and services for which registration is sought – a trademark that lacks distinctiveness for one class of registration may still be inherently distinctive in relation to another.
The examiner will object to an application if the trademark is considered to be descriptive or lacking distinctiveness. Applicants may be able to overcome this objection by demonstrating inherent distinctiveness or by providing evidence of use to demonstrate that the mark has acquired distinctiveness and now serves as an indicator of their organisation.
It is possible to register a trademark for a domain name but to do so, the trademark owner would need to overcome the distinctiveness hurdles described above. Domain names are unlikely to be inherently distinctive and instead must acquire distinctiveness so as to distinguish the goods or services offered under that domain as originating from an organisation. Even if the composite parts of a domain name would otherwise be descriptive (such as ‘realestate.com.au’), if the domain name has acquired a secondary meaning so as to identify goods or services as originating from an organisation it has in fact acquired distinctiveness and may be registrable as a trademark.ii Prior rights
The examiner will also raise an objection if the trademark is considered substantially identical or deceptively similar to an earlier registered or pending trademark, and covers similar or closely related goods or services. Applicants may be able to overcome such objections by demonstrating honest concurrent use, prior use dating from before the priority date of the cited mark, or some other circumstances that satisfy the examiner that the mark should be registered.iii Inter partes proceedings
Once an application has been advertised, third parties can oppose the registration of a trademark on various grounds, including:
- the grounds for rejection of an application discussed in subsections i and ii, being a lack of distinctiveness or the existence of prior rights;
- that the applicant is not the rightful owner of the trademark, is not intending to use the mark or has made the application in bad faith; and
- that the trademark is similar to another (unregistered) mark that has acquired a reputation in Australia, such that the registration would be likely to cause confusion among consumers.
Third parties may also write to the Registrar seeking revocation of acceptance of a trademark application if they consider that IP Australia has made an error in accepting an application, usually because of a prior right missed in IP Australia’s search. It is at IP Australia’s discretion whether to revoke acceptance, and such requests are rarely granted. Third parties can also apply to remove a registered mark if:
- the owner has not used the mark for a continuous period of three years prior to the date of the application;
- the owner did not have any intention to use the mark when it was registered; or
- the owner has not used the mark in good faith.
If the owner of the mark wants to retain its registration, it must oppose the removal claim.
The inter partes proceedings described above (except revocation) are heard by a Hearing Officer from the Trade Marks Office, to whom both parties provide written submissions and evidence in advance of the hearing and verbal submissions on the day of the hearing, although it is possible to have an opposition decided based on written submissions alone. The Officer will provide a written decision and reasons within three months.iv Appeals
Either party may appeal to the Federal Court of Australia (FCA) or the Federal Circuit Court (FCC) within 21 days of the decision. Appeal hearings are de novo, so that new evidence and arguments can be introduced.