Australia Trademark Filing Guide
FILING
A. Requirements
If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.
Joint applicants are permitted in this jurisdiction.
Either actual use or intent to use is required for application.
The following information is required to complete an application:
name and address of the applicant;
state or country of incorporation;
description of trademark (for non-tradtiional marks);
representation of trademark (a depiction of the mark an applicant seeks to register) (for logo marks or some non-traditional marks);
list of goods/services;
official filing fee.
While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:
name and address of the applicant;
representation of trademark (a depiction of the mark an applicant seeks to register) (for logos and some non-traditional marks);
list of goods/services;
official filing fee.
The list of goods and services in this jurisdiction may specify:
the relevant Class heading (However, there is case law to the effect that a class heading does not include all goods/services in a class (e.g., computer software has been held not to be covered by the Class 9 heading). Any specific goods/services of interest should be listed in an application if not clearly encompassed by the class heading.);
a list of the common commercial names for the specific goods or services of interest;
the relevant entire (long) alphabetic class listing (It is likely that IP Australia would accept such a specification, but the application could be opposed by a third party on the basis that the applicant has no intention to use the mark in respect of all items claimed. Claiming the entire alphabetic class listing is not recommended.).
The following number of specimens of the trademark must be submitted: For color marks, six color representations are required.
Although not a filing requirement, a power of attorney might need to be submitted during prosecution in the following circumstances:
none. A power of attorney is not required in any circumstances.
In this jurisdiction, the following type of registration is available:
national;
international.
This jurisdiction is a party to the Madrid Protocol but not the Madrid Agreement and may be designated in international applications.
This country is not a member of the European Union; a Community Trademark is not effective in this jurisdiction.
No multinational regional registrations are available in this jurisdiction.
An international application is subject to the same registrability requirements and examination procedure as a locally filed application. (See the entry for the Madrid Agreement and Protocol.)
Applications can be filed online at the following URL: at www.ipaustralia.gov.au provided that a local address for service is provided.
The official file cannot be accessed online.
Applications are officially searched as to prior trademarks.
B. Priority
If an applicant's home country is a member of the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.
If an applicant's home country is a member of the World Trade Organization, it should be possible to claim the home filing date. (Consult a local trademark attorney.)
An International registration can be based on a national application or registration in this jurisdiction.
C. Classification
This jurisdiction uses the Nice Classification System.
If a trademark is or will be used in more than one class of goods and/or services, one application can cover multiple classes of goods or multiple classes of services but separate applications are also permitted.
For a multi-class application, the applicant must pay class fees on a per-class basis.
D. Representation
An application to register a trademark may be filed directly in this jurisdiction by:
the applicant, even if not a citizen of or domiciled in the jurisdiction (provided that the applicant has an address for service in the jurisdiction (e.g., the address of a distributor));
the applicant, but only if a citizen of or domiciled in the jurisdiction;
a trademark representative/attorney/agent, even if not a citizen of or domiciled the jurisdiction (provided that the representative/agent/attorney has an address for service in the jurisdiction);
a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.
APPLICATION
A. Publication
The filing particulars of an application are made available to the public.
The filing particulars are made available:
through publication and online.
The following application details are made available to the public:
mark;
name of applicant;
address of applicant;
state or country of incorporation of applicant;
application number;
application date;
goods/services;
priority claim information;
representation of trademark.
B. Examination
Applications are examined in respect of:
formalities: i.e., for compliance with the filing requirements;
classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;
clarity: i.e., that descriptions are clear, and are understandable;
descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;
distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing goods or services of one individual or organization from those of other individuals or organizations;
deceptiveness: i.e., to check whether a trademark of such a nature as to deceive the public (for instance as to the nature, quality or geographic origins of the goods or services);
conflict with an earlier registration, prior filed application or earlier unregistered rights resulting from an official search.
If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:
The existence of a valid coexistence agreement between the applicant and cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority. Whether or not a coexistence agreement is accepted by the Trade Marks Office will depend on the terms of the agreement. An agreement will not be acceptable if it there are any conditions or limitations on the terms of use or registration of the applicant's trademark for the goods/services that are the subject of the application. Accordingly, most coexistence agreements are not acceptable.
This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive). The Office cannot require an applicant to enter a disclaimer, but an applicant may voluntarily enter a disclaimer. Usually this would be the result of an opposition or other negotiation with a third party. Voluntarily entering a disclaimer will not affect the inherent registrability of the mark.
The order of the application process is as follows:
Examination, publication, registration.
C. Prosecution
Accelerated examination may be requested. A declaration must be provided outlining the reasons expedited examination is required. If accelerated examination is requested, the application will be examined within four weeks of the request. Examination of applications claiming convention priority is automatically accelerated.
A reason for acceleration is required. The following are considered acceptable reasons: there is a risk of infringement, the applicant has already invested in the manufacture and/or advertisement of goods/services bearing the mark, or other good reason.
A fee for acceleration is not required.
The following rights are established by a pending application:
the filing date of the application establishes a home filing date for purposes of priority;
the filing date of the application establishes a constructive date of first use for an intent to use application;
the pending application can be cited in official examination against a subsequent (later filed) conflicting application;
the pending application can be used in a third party opposition proceeding against a subsequent (later filed) conflicting application;
the pending application establishes a prima facie proof of ownership of a trademark (although an application may be opposed on the basis of a prior use of the mark by another trader).
D. Opposition
An application can be opposed.
The following can be grounds for opposition:
proprietary rights, such as an earlier conflicting registration;
the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose or value of goods or of rendering of services or other characteristics of goods or services;
the mark is not distinctive;
the mark is misleading, deceptive or disparaging;
the mark is functional;
breach of copyright;
rights under Article 6 bis of the Paris Convention (notorious or well-known mark);
rights under Article 6 ter of the Paris Convention (protection of armorial bearings, flags and other State emblems);
the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;
the mark consists of a geographical indication;
the mark is against public policy or principles of morality, i.e., scandalous;
use of the mark would be contrary to law (including breach of registered design rights).
An application is published for opposition purposes after formal examination of the application.
The opposition period begins on the following date: date of publication in the Official Journal of Trade Marks.
The opposition period ends on the following date: two months from the date of publication.
Anyone may oppose an application.
Oppositions can be filed online using eServices at www.ipaustralia.gov.au.
