About IP

Who can apply for a Trade Mark?

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.

Filing an Application

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.

Examination

Typically within four months after filing a trade mark application, an IP Australia Examiner will examine the application and report on whether there are grounds for rejecting the application under the Trade Marks Act 1995.

Capability of distinguishing

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. 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.

If the Examiner finds that the trade mark is not inherently adapted to distinguish the goods or services, the Examiner can consider the extent of use or intended use of the trade mark (and any other circumstances) in deciding whether the trade mark already distinguishes the goods or services, or will do so in the future.

Substantially identical or deceptively similar trade marks

Examination also involves a search of the Trade Marks database of IP Australia for prior identical or similar marks designating the same or similar goods and services. If a substantially identical or deceptively similar mark is found for the same or similar goods and services, an objection will be raised.

It may be possible to overcome objections of this type by deleting some goods or services from the trade mark application to remove any overlap, by obtaining consent to the use the trade mark from the owner of the earlier filed trade mark application or registration or by submitting evidence of prior or honest concurrent use of the trade mark.

Acceptance

Once the Registrar of Trade Marks accepts the trade mark application for registration, acceptance is advertised in the Official Journal of Trade Marks for opposition.

Opposition

At any time within three months 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.

Grounds for opposing include:

• The applicant is not the owner of the trade mark. This occurs when there has been 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, each party has an opportunity to file evidence and be heard at a Hearing. The matter is then decided by a Delegate of the Registrar of Trade Marks.

Registration

If no notice of opposition is filed, the application will proceed to registration, provided that the registration fee is paid within six months.

Renewal of Registration

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

The registration is then renewable for further ten year periods, on payment of renewal fees.