Why and how to register a trademark in Australia

In Australia registration is not mandatory to obtain trademark rights, as extensive prior use of a trademark can be recognized. However, registration is always highly recommended as it grants presumption of ownership and helps enforce the trademark.

Trademark applications in Australia must be filed with the Australian Intellectual Property Office (IP Australia).

A registered trademark in Australia grants protection in: Christmas Island, Cocos (Keeling) Islands, Nauru and Norfolk Island.

Australia is a member state to the Madrid Protocol. Thus, the extension of an international registration of a trademark via the Madrid System is possible for this country. For further information regarding our services for trademark filing through the Madrid System click here.

It is not necessary for the trademark to be in use in Australia in order for it to register. However, prior use of the trademark may help overcome objections raised by the trademarks office on grounds of lack of distinctiveness.

If you register a combined trademark (which includes both word elements and figurative elements) in Australia, the exclusive right to use the trademark is limited to a use of the trademark in the exact configuration or way in which it was filed and registered. If you wish to use the word element of your trademark separately from the logo (or vice versa), it is recommended you register for another trademark including only the word or figurative elements you wish to use and protect separately.

Nevertheless, if a third party eventually intends to register or use a trademark for similar goods or services that includes a primary or distinct part or portion of your trademark, you will have the right to oppose the application based on confusing similarity.

Once the trademark has been accepted by the trademark office it will be published in the Official Journal of Trademarks. From the date of publication starts a two-month period in which interested third parties may file opposition actions against the trademark application. Probabilities of success for an opposition will vary in each case depending on the circumstances.

In Australia, whether you file your trademark in color or in black and white, you will have the right to use it in any combination of colors you wish, unless a restriction is specifically stated at the moment of registration. 

In case the trademark includes words that have a meaning in any other language than English, or includes foreign characters or alphabets (Pinyin, Han, Kanji, Katakana, Cyrillic, Greek…) then a translation or transliteration will have to be provided with the application.

Last names or surnames can usually be registered as trademarks, unless they are common in Australia. They will be deemed common by the trademarks office if they appear more than 750 times in the electoral roll. 

Although, as stated above, it is not necessary for a trademark to be in use in Australia in order for it to register, if it is not used for a period of five years after registration or for consecutive periods of three years after that, it will become vulnerable to cancellation actions for non-use.

Once registered, trademark in Australia have a validity of ten (10) years counting from the application date. It can then be renewed indefinitely for successive periods of ten years. The renewal can be requested during the year preceding the expiration date, as well as during the six months following it, upon payment of additional fees.

 

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