A trade mark is a sign used or intended to be used by a trader to distinguish its goods and/or services dealt with or provided in the course of trade from goods and services of other traders. Examples of signs are a name, word, colour, device, shape, taste, smell, sound, packaging or any combination of these signs.

To file a trade mark application in Australia, the following details are required:

Ÿ          full name and address of the applicant.  If the applicant is a company, if an Australian company, the ACN or ARBN number; if a foreign company, the country/state of incorporation;

Ÿ          details of goods and/or services in respect of which registration is required;

Ÿ          the sign or trade mark, or representation of the sign or trade mark

Ÿ          details of convention priority claim (country, date and details of the basic application from which convention priority is required)

Advantages of trade mark registration

Ÿ          An exclusive right to use the trade mark in respect of goods and services in respect of which the mark is registered

Ÿ          Trade mark registration may be perpetually renewed, provided certain use and renewal requirements are met

Ÿ          Owner of a trade mark may bring an infringement action without the need to prove reputation or likelihood of damage

Ÿ          Presence of the trade mark on the Register in most instances serves as a deterrent to use the same of similar mark

Ÿ          A registered owner can license use of the mark without danger of losing its reputation.  Authorised use of the mark redounds to the benefit of the trade mark owner.

Pre-filing search to determine availability

Before filing of a trade mark application, we recommend that a prior search of the available records of the Australian Trade Marks Office is conducted to ascertain in so far as it is possible if the proposed sign or trade mark is already registered or applied for.  Although pre-filing search is not compulsory, it is a prudent exercise to avoid any possible infringement action or incurring unnecessary costs if the sign is already the subject of a trade mark application.

Apart from a search of the available records of the Australian Trade Marks Office, we also conduct searches of records available on the internet.  Although, not exhaustive, it may provide some background information relevant to the proposed sign or trade mark which may be crucial to the applicant’s decision to proceed or otherwise.

Stages of an application

            Examination of application

A trade mark application is examined for potential conflict with earlier marks on the Australian Trade Marks Register and assessed on whether it is inherently registrable, is descriptive and/or does not qualify for registration for other reasons.

An Examiner’s Report is generally issued which states the objections raised or any matter raised by the Examiner.  The applicant is allowed 15 months from the date of issue of the Examiner’s Report within which to reply to or resolve any objection or requisition raised in the report.  In reply, we, on the applicant’s behalf, may file submissions, file evidence of use or reply to any queries raised by the Examiner.

Once objections raised are withdrawn or any requisition resolved or any query, answered, the trade mark is then recommended for acceptance. 

            Acceptance and the Opposition Period

The formal acceptance for registration is published in the Official Journal of Trade Marks.  If no opposition is filed within three months or an extended period (duly requested by a possible Opponent), the trade mark then proceeds to registration after the official registration fee is paid.  A certificate of registration is issued shortly thereafter.

If an opposition to the registration of the mark is duly filed, opposition proceedings are commenced.  The registration or refusal to register the mark will then depend on the outcome of the opposition.  However please note that only a small percentage of trade marks are opposed.

            Registration

Australian trade mark registrations are effective for an initial period of ten (10) years and may be effective indefinitely for ten (10) year terms upon payment of the requisite official renewal fees.  The renewal fees are due shortly before the expiry of every ten (10) year term.

It is also important to note that rights acquired in registered trade marks may be vulnerable to non-use action if not used during a continuous period of three years.