AUSTRALIAN TRADEMARKS

Our services include the professional preparation of applications for trade mark registration. We can assist you in overcoming examination objections to secure trade mark registration in Australia, New Zealand and overseas.

FILING REQUIREMENTS

Once a decision is made to lodge a trade mark application, an Attorney will require:
• a representation of the trade mark;
• a list of the goods and/or services in respect of which protection is required; and
• the full name of the Applicant (i.e. the owner of the trade mark) and, if a company, the A.C.N.

PRIORITY DATE

In Australia once a trade mark is registered, the registered rights take retrospective effect from the priority date. The priority date is usually the date on which the trade mark application was filed with the Australian Trade Marks Office (IP Australia). However, an Australian application may “claim priority” under the Paris Convention from an earlier application for the same trade mark first filed less than six months previously in another Convention country. In this case, the priority date will be the date that the earlier overseas application was filed. The Paris Convention is an international agreement to which Australia and ~170 other countries are signatories. Priority date is also important because the Examiner will only cite a similar mark as being in conflict with a trade mark application if the similar mark appeared on the register before the priority date of the application under examination.

CLASSIFICATION

Goods and services that can be protected by a trade mark are divided into 45 classes, in accordance with an international classification system. When drafting an application for trade mark registration, it is important that the specification of goods and/or services is accurate and that the appropriate classes are selected.

Once registered, an application will provide protection only for the goods or services specifi ed in the registration, or closely related goods and/or services. It is therefore important to ensure all goods or services of interest are properly specified and the correct classes chosen. A common mistake is for applicants to file in fewer classes than necessary to properly cover their goods or services of interest, or to file in unnecessary classes.

Usually, the goods or services to specify are those from which the applicant derives an income. By way of example, a restaurateur who also sells house-made condiments might specify services relating to the provision of food and drink in class 43, as well as goods class 30 for ‘sauces’.

However, even though the restaurant name might appear on menus or sauce labels, it would not be necessary to seek protection of ‘printed matter’ in class 16.

It is possible for DIY applicants to select goods and services available through “pick lists” provided by IP Australia and other online filing platforms. However, it is very important that
the goods and services are selected correctly for a trade mark registration to be effective.

Filing a trade mark application for the incorrect classes of goods or services can lead to loss of rights and inability to stop an unauthorised third party from using a registered trade mark.
This is the most commonly reported error among self-filed DIY applicants. An Attorney can assist you in choosing the appropriate classes and description of goods and services to ensure suitable protection of a trade mark.

APPLICATION PROCESS & EXAMINATION

Trade mark applications are usually examined approximately four months after filing. Examination can be expedited to around six weeks, for example if an applicant has already invested significant effort or funds in the brand.

The purpose of examination is to determine if the trade mark application complies with all formal requirements. The examiner will also determine whether the trade mark has the requisite level of distinctiveness and whether it conflicts with marks already on the Register.

If the examiner believes a trade mark is lacking in distinctiveness or is in conflict with a mark already on the Register, he or she will issue an adverse Examination Report.

Applicants have 15 months from issuance of an Examination Report to address any issues preventing acceptance. An additional 6 months can be obtained upon payment of the relevant fees, without providing supporting reasons.

It may be possible to overcome an adverse Examiner’s opinion through legal argument, amendment of the application and/or the presentation of evidence in support of registrability.
It is usually advantageous to address the matters raised by the Examiner as soon as possible to place the application in order for acceptance without having to apply for any extensions of time. After a trade mark application has been accepted, it is advertised in the Australian Trade Marks Journal.

Third parties are afforded a period of two months from advertisement of the application to oppose registration. Most trade marks are not opposed and after the expiry of the opposition period, the Certificate of Registration will issue.

Trade Mark Registration internationally

If you’re an Australian business owner looking to expand into overseas markets we will help you obtain trademark registrations either directly or via an international application under the Madrid Protocol. Contact us too for help with infringement and registrability searches and with the transfer of trade marks.

If you wish to secure trademark registration in Australia or overseas, or if you have a trade mark related problem then call Geraldine Rimmer, Kellie Jukkola or Michael Buck on 07 3369 2226 or email geraldine@mbip.com.au for expert help in this important area.