Australia is a ‘first-to-use’ jurisdiction. This means that the first person to use a trade mark will generally have superior rights over an earlier filer of the same trade mark.
The following signs can be registered as a trade mark in Australia:
The following information is required to file a trade mark in Australia:
A power of attorney is not required.
Multi-class filings are permitted.
The Australian Trade Marks Office has ‘standard’ descriptions for goods and services based on the Madrid Goods and Services List. It is not necessary to use these standard descriptions, however a higher official fee applies where an application claims ‘non-standard’ goods and services.
The usual timeframe from filing to examination is around 2 to 3 months. Examination (but not registration) can be expedited on request where there are legal or commercial reasons for requiring faster examination. The minimum timeframe from filing to registration is 7½ months.
Trade mark applications are examined on absolute and relative grounds. If grounds for refusal are raised on examination (office action), an applicant has 15 months to overcome the refusal.
Opposition to registration of a trade mark can be filed by any person. The opposition period is 2 months from the publication date of a trade mark.
Some common grounds of opposition are:
Trade marks are registered for 10 year terms. Trade marks are available for renewal 12 months before expiry.
Proof of use is not required for a trade mark to be registered. Marking is not compulsory however the ® symbol is legally recognised and can only be used with registered trade marks. Once a trade mark is registered, there are no requirements to file statements of use or other maintenance actions. However, an application can be made to remove a trade mark from the Register if it has not been used in the preceding 3 years.
Australia is party to: