1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Australia. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is not compulsory, but it is advisable. As discussed below, the legal benefits of registration may not be available otherwise. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.
3. What is registrable?
Letters, words, names, signatures, numerals, devices, brands, headings, labels, tickets, aspects of packaging, shapes, colors, sounds, and scents, or any combination of these, are capable of registration, provided they can be represented graphically. Service marks may be registered.
4. Can a trademark be registered for retail and like services?
Yes.
5. How are domain names protected?
Domain name registration may be sought via the appropriate Registrars in the .com.au, .net.au, .org.au, .edu.au, id.au, asn.au and other domains. The rules for registration vary. Those for the .com.au are currently restrictive. Domain names also may be registered as trademarks, if they meet the usual registrability requirements.
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes several months. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting an Australian trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide a representation of the trademark that is sufficient to identify the trademark unless the mark can be represented in plain block capitals, full details of the applicant, and a list of goods/services to be covered. Six color copies are required if the mark is to be filed in color. If the trademark includes words in a language other than English, or characters constituting words that are not Roman letters, it is advisable, before filing, to provide a translation and (if relevant) a transliteration of those words and/or characters. No documents need to be executed by the applicant.
9. Is local registration the only option, or are there international alternatives?
An Australian application only has effect in Australia, and can be filed in Australia by local and on behalf of foreign applicants. In addition, Australia acceded to the Madrid Protocol in 2001 and, since July 11, 2001, Australia may be designated in international applications filed under the terms of the Protocol. An international application is subject to the same registrability requirements and examination procedure as a locally filed application.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. Multi-class applications may be filed.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding an Australian application, the filing date of the home application can be claimed as the filing date in Australia. Similarly, if an applicant抯 home country is a member of the World Trade Organization, it should be possible to claim the home filing date; consult an Australian trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
If the registered proprietor or an authorized user does not use a mark within any continuous period of three years, the registration may be vulnerable to cancellation for nonuse upon application by an aggrieved party. However, an application for cancellation for nonuse cannot be lodged until five years have elapsed since the 揹ate of registration?(deemed to be the date of applications for registration). It is not necessary to provide evidence of use to renew a registration.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of a slightly different trademark would not affect the enforceability of the registration. A registered mark may be amended in some circumstances.
14. Is there any advantage to using a trademark before filing an application?
Yes. Australia recognizes prior trademark use, and evidence of use before filing may assist in achieving registration of some marks that may not otherwise be registrable. In addition, a mark that has been used before may be registrable in the face of an earlier filed application for an unused mark, and may even prevent the registration of such an unused mark.
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone may apply who claims to be the owner of a trademark and is using or has an intention to use the mark directly or through licensees.
16. What information is first published about an application/ registration and when is it published?
The name of the applicant, class(es), divisional details (if relevant), priority country and date (if relevant), date of filing, and number allocated to the application are published in the Official Gazette usually within a month of filing. Full details of the application are normally available online from the Trade Marks Office database within a few weeks of filing.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness. A search for prior conflicting marks that can be cited against the application will be conducted.
18. What response to official objections is required?
The applicant is entitled to reply within a given period that may be extended. If objections are confirmed, the applicant is entitled to appeal. The goods/services of the application may need to be amended and consent from the proprietors of cited registrations may be required. However, consent alone may not be sufficient to overcome an official objection.
19. How long is the registration process?
The registration process takes approximately 12 to 24 months.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent application.
21. What is the legal effect of a registration?
A registrant has the exclusive right to use a registered trademark, to authorize other persons to use it, to sue for infringement of the registration, and to apply for cancellation of subsequent registrations and applications. A registrant can also apply for seizure of counterfeit goods by Customs authorities, and request criminal penalties.
22. Can an application be opposed or cancelled by third parties?
Yes. Third parties may file opposition to an application within three months from publication on the grounds of nondistinctiveness, deceptiveness, or conflict with prior rights. After registration, a registration may be cancelled on similar grounds on application to the Australian Trademark Office or to a court with appropriate jurisdiction (e.g., the Federal Court of Australia).
23. Can an application or registration be assigned?
Yes. It is possible to assign an application as well as a registration. The assignment may cover only some of the goods or services (but must cover the entire territory).
24. Must an assignment include goodwill?
An assignment must include the goodwill in the mark itself, but need not include the goodwill of the business (the physical assets). However, assignments without the goodwill of the business may give rise to difficulties in some circumstances.
25. Does an assignment have to be recorded?
Recordal is compulsory; however, no time period is specified within which an assignment must be recorded, and no sanction is prescribed for nonrecordal. It is generally in an assignee抯 interest to record an assignment as soon as possible, so that the Register reflects the true proprietor of the mark.
26. Can an application or registration be licensed?
Yes. Consult an Australian trademark attorney.
27. Does a license have to be recorded?
Recordal is not compulsory. Authorized use will benefit the owner, whether recorded or not.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Australia (including Christmas Island, the Cocos (Keeling) Islands and Norfolk Island).
29. How long does a registration last?
The term of registration is ten years from the date of application, and is renewable for ten-year periods.
30. What is required to renew a registration?
Payment of a renewal fee is the only requirement.
31. Is it necessary to indicate a trademark registration on goods or services?
Although marking is not compulsory, it is recommended, e.g., 揜egistered Trade Mark?or ?are commonly used.
32. Does the International Classification System apply?
Yes, currently the Eighth Edition of the Nice Classification.
33. Is your national office accessible online?
Yes. Please visit IPAustralia at www.ipaustralia.gov.au |
