In Australia registration is not mandatory to obtain trademark rights. Extensive prior use of a trademark will have legal recognition and may allow the owner to claim certain rights.
Registering a trade mark in Australia is highly recommended. A trademark that is registered through the Australian trademark office will safeguard the owner’s rights.
Having a registered trademark in Australia will grant presumption of ownership. Having your trademark registered in Australia will prove useful in case of cases of unauthorized use of trademark infringement.
Registered trademarks in Australia may use the registration symbol ®. This may only be done in connection to the goods or services included in the trademark registration.
The TM symbol may be used in connection to a trademark being used in Australia that is still not registered. This is used to alert third parties that the mark is in fact being used as a trademark.
The government authority in charge of trademarks is called the Australian Intellectual Property Office (IP Australia). This government office is not only responsible for trademarks but also for other areas of intellectual property IP as well.
Trade mark registration in Australia automatically grants protection in the Christmas Island, Cocos (Keeling) Islands, Nauru and Norfolk Island.
Australian trademark system came into effect with Australia’s Trade Marks Act 1905. The very first trademark to ever be registered in Australia was PEPS. This trademark was registered as a medical product to deal with colds.
Currently there are more than 1 million registered marks. The current trademark legislation in Australia is the Trade Marks Act of 1995.
The trademark data base in Australia is available online and keeps records of all Australian trade marks that have been filed.
The Australian trademark database works very well to find possible identical or similar trademarks. The fact that similar trademarks do not exist in Australia does not ensure successful registration. A full Australian trade mark search report should be carried out by a trademark attorney before you proceed.
In Australia the trademark office search will use the Australia trademark database that is available to the public. However when examining a trademark not only will similarity between trademarks be considered to decide if it is registrable.
Numerous grounds for refusing a trademark in Australia will be examined by the registration authority. Many of the reasons for which a trademark will be refused are also applied in other countries. However, Australia does have some unique reasons for refusing a trademark application.
Generally last names or surnames can be registered as trademarks in other countries. In Australia a trademark that includes a surname will be refused if it is considered common by the trademarks office. Surnames will be deemed common for trademark purposes if they appear more than 750 times in the Australian electoral roll.
iGERENT offers extensive search services. Our search reports will allow you to identify any possible issues a trademark application may face before filing for it. Our reports are done by trademark attorneys.
Our australian trademark experts do not only carry out an Australian TM search. Our experts will also take into account possible grounds for refusal. Our examination is carried out in the same way the trademark authority will do so when examining your application.
An Australian trademark can be registered for a business name, product name, catch phrase, logo, color, shape or even a scent.
In Australia it is generally irrelevant if you file a trademark in color or in black and white. Trademark owners will have the right to use their marks in any combination of colors they see fit. Exceptional restrictions exist if colors of the trademark are specifically stated at the moment of filing the trademark application.
No power of attorney documents are necessary in order to proceed with a trademark application in Australia. Foreign applicants will need to be represented by a local trademark agent.
Trademarks are filed directly through the government office of intellectual property of Australia. Filing of a trademark application for Australia is also possible as an international trademark through the Madrid System. This is possible as Australia is a member of the Madrid Protocol.
It is not necessary to use a trademark for its products and services before filing or during the application process.
Once a trademark is filed it will undergo an in depth examination by the Australian trademark authority.
If a filed trademark includes words that are not in English translation of the words will need to be accompanied. If a trademark consists of words in foreign characters a transliteration and translation of the words will need to be presented.
The examination process is not limited to checking to see if prior similar trademarks exist. Numerous other causes for refusing a trademark exist. If a trademark is initially refused by the trademark office, depending on the reasons for refusal this may be overcome.
Effective use of the trademark may prove useful. This is specially true when an adverse report is received for the grounds of lack of distinctiveness. Distinctiveness of a trademark may be acquired in Australia through prior use.
Once a mark successfully passes the examination stage it will be published in the Australian official journal of trade marks.
Once a trademark is published in the trade mark journal there is a 2 month period to oppose the trademark. Trademark opposition periods allow for third parties to prevent the registration of a mark that they believe affect their trademark rights. Chances of success for an opposition will vary in each case depending on the circumstances.
Once the trademark is successfully registered, the Australian Intellectual Property Office will send a trademark certificate of registration in digital format.
A registered trademark in Australia is valid for 10 years. The 10 year period is counted from the application date.
Not using your registered trademark in Australia after registration may lead to its cancellation. Cancellation actions may be presented against a trademark that is not used within the first 5 years after its registration. After this trademark cancellation actions may still be received if the mark is not used for more than 3 years.
Trademarks may be renewed in Australia every ten years as many times as needed.
Trademark renewal in Australia needs to be processed the year preceding to the expiration date. There is also a period for Australian trademark renewal after it expires. The late renewal period is for 6 months and is available upon payment of additional fees.
All government and official fees for trademark services in Australia must be paid in Australian Dollars AUD.
Our fees are all inclusive. This means our fees for Australian trademark services include all government or official fees that need to be paid. Our clients may pay us in USD, EUR or GDP.
Our fees are all inclusive and all services will be clearly quoted before proceeding.