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The registration process - Phillips Ormonde Fitzpatrick

Registered trade marks



Who can apply for a trade mark?


A person claiming ownership of a trade mark is entitled to apply to register it. In Australia, the trade mark owner is considered to be the first person to use the trade mark in the course of trade in Australia. A person who intends to use a trade mark in the future may also apply. In this case, the act of applying is taken to be the first “use” of the mark.

Registration requirements


A trade mark application will be rejected if the trade mark:

  • contains or consists of a prohibited sign
  • cannot be represented graphically
  • is not capable of distinguishing the specified goods or services from the goods or services of other persons
  • contains or consists of scandalous matter or if its use would be contrary to law
  • would be likely to deceive or cause confusion if used in relation to the specified goods or services, or
  • is substantially identical with or deceptively similar to an earlier filed trade mark registered or pending in the name of another person in respect of the same or similar goods or closely related services (unless you can establish particular exceptional circumstances).

The trade mark registration process


There are four main phases in the registration process in Australia:

1. Application
2. Examination
3. Acceptance
4. Maintenance

Application


The trade mark registration process is commenced by completing and lodging an application form together with the applicable fee with IP Australia. The application must include a representation of the trade mark and specify the goods and/or services for which registration is being sought.

All goods and services are classified into one of 45 different classes. Classes 1 to 34 relate to goods eg clothing, footwear and headgear are in class 25. Classes 35 to 45 relate to services eg building construction, repair and installation services are in class 37. A trade mark may be registered in respect of goods and/or services in more than one class.

The rights given by a trade mark registration are usually limited to the particular goods and/or services covered by that registration. For example, registration of a trade mark in relation only to clothing will not usually give the owner the right to prevent other people using the identical trade mark in relation to sporting equipment.

Examination


Typically within four months after filing a trade mark application, an IP Australia Examiner will examine the application and report on whether the application has been made in accordance with the Trade Marks Act and whether there are grounds for rejecting the application.

Applicants are permitted 15 months from the date of the Examiner’s first report to overcome all objections raised either by argument or by amendment of the application. The 15-month deadline may be extended for up to an additional six months on payment in advance of monthly extension fees. However, if the application has not been accepted within the 15 month period or extended period, it lapses irrevocably, unless particular special circumstances can be shown. Two factors considered during examination are:

Capability to distinguish
As part of the Examination process, the Examiner must decide whether a trade mark is capable of distinguishing your goods or services from the goods or services of other traders. The Examiner first takes into account the extent to which the trade mark is inherently adapted to distinguish. For example, an invented word such as KODAK would be considered inherently adapted to distinguish goods and/or services. A laudatory word such as PERFECTION or a descriptive word such as WHOPPER for hamburgers would not be considered inherently adapted to distinguish particular goods or services and may be difficult to register as a trade mark.

Trade marks which are not inherently adapted to distinguish goods or services are mostly trade marks that consist of a sign ordinarily used to indicate some characteristic of the goods or services, such as the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of goods or of the rendering of services.

If the trade mark is considered to some extent inherently adapted to distinguish your goods or services from the goods or services of other persons, the Examiner can consider the extent of use or intended use of the trade mark by you (and any other circumstances) in deciding whether the trade mark already distinguishes your goods or services, or will do so in the future.

If the Examiner finds that the trade mark is not inherently adapted to distinguish your goods or services – but you can show that the trade mark has been used to such an extent prior to the date of filing the application that it does in fact distinguish your goods or services the trade mark is taken to be capable of distinguishing your goods or services.

Substantially identical or deceptively similar trade marks
The Examiner will also conduct a search of the Trade Marks Register for prior identical or similar marks designating the same or similar goods and services. The Examiner will consider the appearance, the sound, plus any other features of the trade mark and compares these with the features of any prior marks in force on the register. If a substantially identical or deceptively similar mark is found, an objection will be raised.

It may be possible to overcome objections of this type by pointing out to the Examiner the features which distinguish your trade mark from the prior trade mark(s). Alternatively you might need to delete some goods or services from your trade mark application to remove any perceived overlap with the goods or services of the prior trade mark(s), obtain consent to your use and/or registration of your trade mark from the owner(s) of the prior trade mark(s) or submit evidence of honest concurrent use of your trade mark from a date earlier than the priority date of the prior trade mark(s). If the Examiner still rejects an application, you can request a hearing before a delegate of the Registrar. If the hearing decision is unfavourable, you can appeal against the decision to the Federal Court of Australia.

Acceptance


If no objections to registration of the trade mark application are raised, or if all objections are overcome within the applicable time limits, the Registrar of Trade Marks accepts the trade mark application for registration. Acceptance of the application is then advertised in the Official Journal of Trade Marks.

Opposition


At any time within three months (extendible) from the day on which the acceptance of a trade mark application is advertised in the Official Journal of Trade Marks, a person may oppose registration of the trade mark by filing a notice of opposition. If no notice of opposition is filed, the application will proceed to registration, provided that the registration fee is timely paid.

Registration of a trade mark may be opposed on any of the grounds on which an application for registration of a trade mark may be rejected, except the ground that the trade mark cannot be represented graphically. Common grounds for Opposition include:

  • The applicant is not the owner of the trade mark (prior use of the mark by another person)
  • The use of the trade mark would be contrary to law
  • The trade mark is substantially identical with or deceptively similar to a pre-existing trade mark for the same or similar goods or services, or
  • The application or supporting documents were amended contrary to the Trade Marks Act, or the Registrar accepted the application on the basis of evidence or representations that were false.

After a notice of opposition has been filed, the opponent has an opportunity to file evidence in support of the opposition. The applicant then has an opportunity to file evidence in answer and the opponent has a further opportunity to file evidence in reply. The matter is then decided by a Delegate of the Registrar of Trade Marks. Either party may request a hearing prior to the Delegate’s decision to refuse or accept the application (perhaps subject to particular conditions). An appeal from the delegate’s decision can be made to the Federal Court.

Maintenance - renewal of registration


A trade mark registration initially lasts for 10 years from the date on which the trade mark application is filed (unless cancelled before then).

The registration is then renewable for a further 10 years, on payment of renewal fees. Renewals can be ongoing, with some trade marks being registered for decades.

The owner of a trade mark registration may at any time ask for cancellation of the registration.

Loss of trade mark



Removal for non-use


Any person may lodge an application at IP Australia for a trade mark to be removed from the register, on one or both of the following grounds:

  • That, when the trade mark application was filed, the applicant did not intend in good faith to use the trade mark in Australia in relation to the goods and/or services to which the non-use application relates, and the registered owner has not in fact used the trade mark in good faith in Australia; or
  • At least five years have passed from the date of filing the application for registration of the trade mark, and the registered owner has not used the trade mark in good faith in Australia in relation to the goods and/or services to which the non-use application relates for a continuous period of three years ending one month before the day on which the non-use application is filed.

The trade mark registration will be removed from the register unless the application for removal is opposed within the time allowed. The onus is then on the registered owner to prove that the trade mark has in fact been used in good faith in relation to the goods and/or services to which the non-use application relates during the designated period. If the removal application is opposed, the Registrar of Trade Marks will decide, based on evidence filed during the opposition proceedings, whether or not to remove the trade mark registration (in whole or in part) from the register.

Other grounds for removal


On application by a person whose interests are adversely affected, the Federal Court of Australia may cancel, remove or amend a trade mark registration on certain specific grounds including the following:

  • A condition or limitation entered in the register in relation to the trade mark has been contravened, or
  • The trade mark consists of or contains a sign that, after the date of registration of the trade mark, has become generally accepted within the relevant trade as the sign that describes or is the name of an article, substance or service (ie, has become “generic”).

Protecting your trade mark in other countries


Trade mark laws are not harmonised throughout the world, and a separate trade mark application may be made in each country in which trade mark protection is desired.

Where the country in which registration is sought is a member of the Paris Convention, Australian applicants can claim the Australian filing date as their priority date, assuming they file the foreign application within six months of that date. Most countries of interest to Australian businesses are members of the Paris Convention.

Phillips Ormonde Fitzpatrick can file applications directly in New Zealand, Papua New Guinea and some Pacific Island nations and through reputable attorney firms in other countries.

It is also possible to obtain a single international trade mark registration through the Madrid Protocol which covers more than 75 countries including the European Union and the USA. Australia is a member of the Madrid Protocol, however some of Australia’s major trading partners and other important countries are not members and so can only be covered by separate national registrations.

A Madrid application must be based on an existing Australian-registered trade mark or pending application. The Madrid application is filed with IP Australia, designating those member countries in which protection is sought. Each designated country will examine the application and unless an objection is raised within a specified period, the trade mark will be considered protected in that country as if it had been registered directly. The Madrid system makes it possible to record subsequent changes or to renew the registration centrally in a single step and using a single currency.

There are also various regional trade mark registrations available – of which the most important for many Australian trade mark owners is the European Community Trade Mark registration, covering all member states of the European Union.

In many countries, the first person to apply for registration of a particular trade mark becomes the proprietor of that trade mark. If you are using a trade mark in that country (even if only for manufacturing goods for the purposes of exporting to Australia) and someone else registers your trade mark, you may be found to be infringing that person’s trade mark registration (refer to the Interactive Treaty Map and the key IP treaties table for more information).

It is therefore most important that trade mark searches be conducted prior to commencing use of a particular trade mark in any country and applications for registration be considered before or soon after use commences.