Registration and use

Ownership of marks

Who may apply for registration?

Any person or persons having legal personality and claiming ownership of a trademark can apply for the registration of a trademark under the Trade Marks Act 1995 (Cth) (the Act). The requirement for legal personality does not apply to applications for collective trademarks. If two or more persons have an interest in the trademark, they may make a joint application.

Scope of trademark

What may and may not be protected and registered as a trademark?

Under the Act, a ‘trade mark’ is a sign used or intended to be used to distinguish their goods or services from those of any other person. A ‘sign’ includes any letter, word, name, signature, number, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent, or any combination of these.

Applications may be filed for defensive, certification or collective trademarks.

Unregistered trademarks

Can trademark rights be established without registration?

It is possible to establish rights in an unregistered or ‘common law’ trademark in Australia. Because Australia is a ‘first-to-use’ jurisdiction, if a trademark has been used but not registered domestically, the owner of the trademark will be the first user. In the absence of a trademark registration, the trademark owner may rely on the Australian Consumer Law or the common law tort of ‘passing off’ to assert its rights. However, it can be difficult to assert these rights unless the trademark owner is able to establish a reputation in the trademark, and that use of the same or a similar mark by a third party is likely to mislead or deceive.

Famous foreign trademarks

Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?

Australian law does not explicitly recognise famous or well-known trademarks; however, a trademark with a substantial reputation in Australia will have the benefit of broader protection than a trademark with a lesser reputation.

If a trademark owner is able to establish that the reputation of a trademark in Australia is so substantial that use of another mark would be likely to deceive or cause confusion among a significant number of consumers, the trademark owner can prevent registration of the other trademark even if the other trademark is not ‘substantially identical’ or ‘deceptively similar’ to the trademark or used in relation to closely related goods and services. Information that may be relied upon to prove a reputation may include high sales volumes or extensive advertising and promotion.

If the owner of a famous foreign trademark has used the trademark to such an extent in relation to certain goods and services that the unauthorised use of the trademark in relation to other goods or services might mislead consumers, the trademark owner is also able to file an application to register a defensive trademark in respect of those other goods and services. A defensive trademark is not subject to the same use requirements as a standard trademark, but it can only be filed as a complement to an existing registration for the same mark that is in use in Australia.

The benefits of registration

What are the benefits of registration?

The benefits of trademark registration include:

• the exclusive right to use and authorise the use of a trademark in Australia, in relation to the goods or services for which it is registered;

• statutory rights that are significantly easier to enforce than actions for the common law tort of ‘passing off’ or under the provisions of the Australian Consumer Law, and that include the right to obtain relief from the court for trademark infringement; and

• a discrete asset that can be sold independently of the goodwill in a business, or licensed.

Filing procedure and documentation

What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?

Documentation such as a power of attorney or certificate of good standing is not required to file a trademark application in Australia.

Trademark applications are filed electronically through the online services portal of IP Australia.

A trademark must be able to be represented graphically to be registrable. The representation of the mark should be sufficient to identify the trademark.

Trademark searches are not required prior to filing but are generally recommended.

Registration time frame and cost

How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?

If no objections are raised or oppositions filed, a trademark may be registered once at least seven months have passed since the filing date. If objections are raised by the Registrar during examination, the applicant will be granted 15 months from the date of the examination report to overcome the objections. An opposition filed by a third party would further delay registration of the trademark.

Once a trademark is registered, the effective date of registration is the ‘priority’ date, which is typically the date on which the application was filed.

Official fees of A$400 per class apply to an application made using the standard filing service, or A$250 per class for applications filed using IP Australia’s pre-approved ‘picklist’.

Classification system

What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?

Australia has adopted the Nice Classification of Goods and Services. Multi-class applications are available with payment of additional fees per class. There are no reductions in fees for filing a multi-class application.

Examination procedure

What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?

The Registrar will examine the application under the Act for compliance with the filing requirements, registrability on absolute grounds and potential conflicts with other registered or pending trademarks. The Registrar will issue an examination report in respect of any objections raised and the applicant will be given a deadline of 15 months from the first examination report to respond and overcome the objections. If the objections are withdrawn, the application will be accepted and advertised in the Trade Marks Journal.

The Registrar has discretion to accept a letter of consent and letters of consent will generally be considered persuasive even in cases where the trademarks are substantially identical, for the same goods and used in the same markets.

Use of a trademark and registration

Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?

It is not necessary to claim use of a trademark before registration is granted. However, it may be necessary to file evidence of use during the course of examination to overcome an objection based on absolute or relative grounds.

Since Australia is a party to the Paris Convention, it is possible to claim priority based on a corresponding trademark filed in a Convention member’s country of origin in respect of any or all of the goods or services sought in the ‘base’ application.

If the owner or authorised user of a registered trademark filed after 24 February 2019 does not use the trademark in Australia within three years of the date on which the particulars of the registered trademark were entered on to the Register, the trademark will be vulnerable to removal from the Register for non-use.

Markings

What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?

The ™ symbol can be used for any trademark, whether registered or not, to indicate a claim of rights in the trademark.

The ® symbol can be used with a trademark once it is registered, but it is an offence to use the ® symbol prior to the grant of registration.

Marking is not mandatory but is recommended to both assert rights in the trademark and to clearly evidence use of the trademark to limit its vulnerability to removal from the Register.

Appealing a denied application

Is there an appeal process if the application is denied?

A decision of the Registrar to deny an application can be appealed in the Federal Court or the Federal Circuit Court within 21 days of the rejection being issued. Appeals are in the nature of de novo hearings.

Third-party opposition

Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?

Once an application is accepted it is published in the Trade Marks Journal. A third party may file an opposition within the two-month period following the date of advertisement of the application by filing a notice of intention to oppose with IP Australia. The opponent is generally a person who will be affected by the registration of the trademark. Within one month of filing the notice the opponent must file a statement of grounds and particulars, and the applicant will then have one month in which to file a notice of intention to defend. Thereafter, the opposition will proceed to evidence stages, followed by a hearing.

The grounds of opposition are varied and include a third party’s claim to ownership of the mark at common law or prior use of a similar trademark, that use of the trademark would be contrary to law, or bad faith. To establish a ground of bad faith, the opponent must show that reasonable persons would view the applicant’s conduct as being below acceptable standards of commercial behaviour.

If it appears that a trademark should not have been registered, a third party may seek revocation of registration by the Registrar within 12 months after the registration has been recorded. If registration is revoked, the trademark will revert to a pending application.

A trademark filed before 24 February 2019 may be removed from the Register for non-use if it has been on the Register for five years. For trademarks filed after this date, the trademark need only have been registered for three years to be vulnerable to removal for non-use.

Duration and maintenance of registration

How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?

Trademark registrations remain in effect for an initial period of 10 years from the date of registration, and can thereafter be renewed for further periods of 10 years. Evidence of use does not need to be filed to maintain a registration; however, the trademark owner should be mindful that if the trademark is not used in Australia, it will be vulnerable to removal from the Register for non-use.

Surrender

What is the procedure for surrendering a trademark registration?

A trademark owner may voluntarily cancel a trademark registration by making a request in writing to the Registrar. Only the trademark owner, their address for service or an authorised signatory of the trademark owner (in the case of a company) may file a cancellation request. If there are any claimed interests recorded against the trademark, the Registrar will issue a notice to the claimant allowing them two months to provide a court order to stop the cancellation.

Related IP rights

Can trademarks be protected under other IP rights?

In certain circumstances, both the Copyright Act 1968 (Cth) and trademark law will protect original artistic works used as trademarks. Copyright in Australia automatically vests with the creator of a work on creation of the work and it is not necessary to register copyright. Depending on the nature of the work, copyright will last 70 years after the author’s death.

Where a trademark concerns the aesthetics of a product design such as its shape, colour, configuration, pattern or ornamentation, it can also be protected under the Designs Act 2003 (Cth). For a mark to satisfy the requirements for design right protection, it must be new and distinctive.

Trademarks online and domain names

What regime governs the protection of trademarks online and domain names?

There is no separate regime in Australia for the protection of trademarks online. The Australian Domain Name Authority (auDA) is the regulatory body responsible for the licensing of domain names to companies in Australia. Ownership of a trademark does not entitle the trademark owner to a licence for the domain name for the trademark. If a dispute arises in respect of a registered .au domain name, the complainant must file a complaint with the auDA.

A domain name may be registrable as a trademark provided the applicant is also the registrant or authorised user of the domain name, and unless any grounds for rejection of the application exist, such as that the mark is likely to connote a generic top-level domain.