Filing and registration
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?
Is electronic filing available?
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.
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.
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.
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.
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.
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.