To apply to register a trade mark in Australia, an application must be submitted to the Australian Government department, IP Australia (you can apply online at www.ipaustralia.gov.au). An application must provide details of the trade mark, the name and address of the trade mark applicant, and the goods and/or services for which registration is sought.
Under the Nice Convention (an international convention to which Australia is a party), goods are divided into 34 classes, and services are divided into 11 classes. (For more information about these classes, see IP Australia’s website.)
Application fees are payable per class, so the cost of an application depends on how many classes are required to cover the goods or services. It is not possible to add goods or services to an application after it has been published (which normally occurs no more than two days after submitting the application and often sooner); a new application must be filed to cover goods or services not covered by the initial application.
The applicant for a trade mark must be the owner of the trade mark in Australia. The owner is taken to be the first person to use the mark as a trade mark in relation to particular goods or services in Australia. More than one person may be the owner of a mark where it has been used in relation to different goods or services by different owners. Where a mark has not been used in trade, the act of applying for registration is taken to be the first ‘use’ of the mark.
An application for registration, or a granted registration, may be challenged by a third party who claims ownership through prior use (see ‘Opposition’, below). However, the Registrar of Trade Marks does not question a claim to ownership of a mark as part of the registration process.
Examination and acceptance
IP Australia examines trade mark applications and decides whether they meet the registration criteria and ensures that all the goods and services are correctly classified. If an examiner finds that a trade mark does not meet one or more of the criteria, an adverse report is issued. The applicant then has up to 15 months in which to overcome the examiner’s objections. Extensions of up to six months may be obtained by paying monthly extension fees.
If an examiner decides that the claimed goods or services fall into classes other than the ones set out in the application, additional classes may be added upon payment of additional fees, but only in relation to the goods and services already mentioned.
If an examiner finds that a trade mark meets the criteria, the acception of the trade mark is published for opposition purposes. Assuming that the application is not opposed, the mark then proceeds to registration.
After the acception of a trade mark has been published, third parties can oppose the grant of the application within two months of the publication date. An application may be opposed on any of the grounds applicable during examination, except the grounds relating to graphical representation of the trade mark.
An application may also be opposed on other grounds, including:
- the applicant is not the owner of the mark for relevant goods or services (i.e. not the first user of the mark in Australia for those goods or services);
- the application was filed in bad faith;
- the applicant does not intend to use the mark in relation to the claimed goods or services in Australia;
- the trade mark is similar to a common law (i.e. unregistered) trade mark that has a reputation in Australia, so the use of the trade mark applied for would likely cause confusion or deceive;
- other technical grounds for opposition.
A Notice of Opposition comprises two documents:
- A Notice of Intention to Oppose, which must be filed within two months of the publication of the acceptance of the application; and
- A Statement of Grounds and Particulars, which must be filed within one month of the Notice of Intention to Oppose.
Once a Notice of Opposition is filed, the trade mark applicant must file a Notice of Intention to Defend, otherwise the application is taken to be withdrawn.
If the opposition is defended, the opponent may file evidence in support of the opposition, following which the trade mark applicant may file evidence in answer. The opponent may then file evidence in reply. Once the evidence stage of the opposition is complete, the matter may be heard at an oral hearing before a delegate of the Registrar of Trade Marks, or may be determined by the delegate on written submissions.
If an application has been accepted, and not opposed (or any opposition has been unsuccessful), the application proceeds to registration. In a normal case, where no objections are raised during examination and no opposition is filed, it takes approximately seven and a half months from filing until a registration certificate is issued.
A registration normally lasts for 10 years from the filing date of the application, and may be renewed for further 10-year periods by paying renewal fees for each class of goods and services, as applicable.