Trade and Service Marks
– Trade Marks Act 1995, as amended, including by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012, effective from April 15, 2013, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018, effective from February 24, 2019, and the Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Act 2020, effective from August 26, 2021. Some transitional provisions still give effect to parts of the Trade Marks Act 1955 for some applications lodged under the 1955 Act.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since October 10, 1925.
– Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, since April 8, 1961.
– Convention Establishing the World Intellectual Property Organization (WIPO), since August 10, 1972.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since March 16, 1995.
– Trademark Law Treaty, since January 21, 1998.
– Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, since July 11, 2001.
– Singapore Treaty on the Law of Trademarks, since March 16, 2009.
Applicant: any legal person, firm or company, who is the proprietor of the trademark, may apply. It is possible for a trademark to be registered by an applicant who does not intend to use the trademark but intends the mark to be used by an authorized user or to assign it to a corporation about to be founded.
Applicants not living in the country: may apply for registration on the same terms as an Australian applicant, but must give an address for service in Australia.
Registration of trademarks: marks must be “capable of distinguishing”. Marks registrable include words, names, devices, aspects of packaging, shapes, colors, sounds or scents. Marks must be capable of being represented graphically.
Collective marks: registrable for marks used by members of an association.
Certification marks: registrable for marks indicating approval of trademark owner.
Defensive marks: registrable for well-known registered marks where use on other goods or services likely to indicate a connection with trademark owner.
Novelty: the trademark must not be substantially identical with, or deceptively similar to a trademark registered or applied for earlier by another person in respect of goods or services of the same description, or closely related. Prior use by the applicant or permitted user is beneficial as is a similar registration of the proprietor.
Exceptions to protection: (1) marks not capable of being represented graphically; (2) marks contrary to law; (3) marks likely to deceive or cause confusion; and (4) marks including the word patent, registered, registered design, royal or similar words, royal arms, national flags, seals and international symbols.
Names or portraits: may be registrable if they are capable of distinguishing the goods or services.
Priorities: may be claimed within six months of filing a corresponding application in a Convention country.
Classification: International Classification of Goods and Services.
Territory covered: Australia, including Christmas Island, Cocos (Keeling) Islands and Norfolk Island, the Australian continental shelf, the waters above the Australian continental shelf, and the airspace above Australia and the Australian continental shelf.
Filing requirements for an application (to be sent to resident agent):
1. At least 1 clear representation of the mark.
Electronic filing: available.
Electronic signatures: are accepted.
Amendment of application: voluntary amendment to correct errors, or otherwise, are permitted, provided the amendment would not substantially affect the identity of the trademark or extend the scope of the goods or services; an application may be amended in order to overcome the Examiner’s objections.
Examination: applications are subjected to official search for earlier marks in respect of similar goods or services with which the applied mark is considered likely to be confused, to whether the mark is capable of distinguishing the goods or services and whether the goods or services are properly detailed and classified.
Letters of consent: can be accepted from owners of conflicting marks to overcome objections.
Division: divisional applications may be filed in respect of a part of the mark and/or some of the goods or services of the original filing before acceptance is advertised or lapsing of the application.
Opposition: opposition may be filed within two months of advertisement of the acceptance of the application in the Official Journal: an extension for further time may be obtained, provided it is applied for within the first two-month period, and is only on the grounds of either an error or omission or due to circumstances beyond the control of the person.
Disputes about ownership: ownership resides in the first user or first person to apply for registration of the trademark in Australia whichever is earlier, but in cases of honest concurrent use over a period of years each party may register its mark.
Application kept secret: full details are published on application.
Appeal: appeals against decisions by the Registrar may be made to a single judge of the Federal Court and further appealed to the Full Bench of the Federal Court and finally the High Court of Australia.
Urgent registration: expedited examination and registration may be requested, if supported by a declaration.
Provisional registration: no provision.
Publication: full particulars are open-to-public inspection shortly after the application is filed, details of the application are published in the Official Journal following acceptance of the application.
Correction of registration: changes of name of the proprietor or address may be made before or after registration. Amendment of the specification of goods or services may be made provided there is no extension of the rights; the trademark itself may be amended, provided this does not substantially affect the identity of the mark.
Delivery of document: registration must be within six months of advertisement of acceptance.
Beginning of protection: an injunction cannot be obtained until registration.
Duration: ten years from application date.
Extension of duration: renewable for periods of ten years as often as required but on payment of renewal fees.
Renewal: renewal dates are calculated from the date of filing the application. Renewal applications are receivable twelve months prior to the due date.
Term of grace for renewal: restoration of a lapsed registration possible up to six months after the due date.
Obligation to use: use is not compulsory, however, a trademark not used for a continuous period of three years may be removed from the Register on application by a third party. Such a removal action cannot be commenced within three years from the registration date of the mark. An interested party may apply at any time for removal of a registered mark if it can be shown that the registered owner did not have any intention to use the mark and has not used it.
Marking of registered goods and services: is not compulsory but is recommended.
Text of marking: “Registered” or “Regd.” preferably with the words “trade mark” and the registration number.
Assignment: may be registered with or without goodwill of the business. Assignment must be registered. Pending applications may also be assigned.
Licenses: permitted users may be entered on the Register.
Modification of Protection after Registration
Right of prior user: a prior user of a conflicting mark is entitled to registration and to continue using his mark.
Opposition to registered marks: may be raised by way of application to court for revocation based on such grounds as improper registration, improper use of the mark, and application to Registrar on grounds of lack of use of the mark as above.
Compulsory licenses: no provision.
Re-filing of identical marks: is allowable when filed under the same owner’s name.
Validation of invalidated mark: (for renewals only) is possible within six months of the date on which renewal was due. A new application may be filed if necessary.
Infringement – penalties: action may be taken in the State or Federal Courts against any person using the trademark registered or a confusingly similar mark in relation to the goods or services in respect of which the mark is registered. Use on goods of the same description as those registered or on goods or services which are closely related to registered goods or services is an infringement. Use of a well-known mark or a mark substantially identical or deceptively similar to a well-known mark is an infringement if it is likely to indicate a connection with the owner of the well-known mark. Penalties for infringement are an injunction, damages and delivery up of infringing articles, literature, etc.