Commercial Litigation News

Trade Mark Application Process

The purpose of a trade mark is for it to be used as a ‘badge of origin’, a sign that links the goods or services to the trader who supplies them.

Prior to filing any trade mark application, you should first give consideration to what trade marks should be registered, as well as which goods and/or services will be relevant. Prior to investing time and money in developing, applying for and marketing a trade mark, it is also advisable to carry out investigations to determine whether any other traders are already using a similar mark that may pose difficulties for your intended use.

Trade mark application

Once a proposed trade mark has been selected, the trade mark application process is commenced by filing an Application to Register a Trade Mark. The application can be submitted in hard copy or by using the IP Australia eServices facility. The official fee payable to IP Australia on filing ranges between $120.00 and $200.00 per class, depending on how the application is lodged and what goods and services are selected.

Once filed, the trade mark application will be indexed, allocated an application number and be published in the Australian Official Journal of Trade Marks (“Official Journal”)1. The application details will also be publically assessable on the Australian Trade Mark On-line Search System (ATMOSS) website.

The trade mark application will then be examined by the Registrar of Trade Marks (“Registrar”).

Examination

Once the trade mark application has been examined, the Registrar will issue an examination report. We typically see trade mark examination reports issued within three to five months of the application filing date. If there are circumstances justifying early examination, it is possible to request an expedited examination which, if accepted, will usually see the examination report issued within one month.

The examination report can either be a clear report (where the Registrar considers the application in order to proceed to acceptance) or be subject to citations (where the Registrar has identified issues it considers presently prevent acceptance).

Common citations include where the trade mark that has been applied for is not distinctive, or where it is substantially identical with or deceptively similar to a trade mark with an earlier priority date (ie. a trade mark that was filed before the subject application).

Other grounds for rejection may include situations where:

  1. the trade mark contains certain protected symbols (for example the Olympic rings);
  2. the trade mark is unable to be represented graphically;
  3. where the trade mark would be scandalous or contrary to law.

If citations are raised, an applicant may be able to amend the application or take certain steps for consideration for the Registrar, which may allow for the trade mark to proceed to acceptance. The applicant has fifteen (15) months from the date of the first examination report for the application to be accepted. If the trade mark is not accepted within that period, or an extension obtained, the trade mark application will lapse.

Once a clear examination report has been issued, the application will sit in abeyance for five to six months from the application date, as required by international convention obligations. Once this time has passed, the Registrar will advertise acceptance of the trade mark application in the Official Journal.

Opposition period

The Registrar’s publication of the notice of acceptance starts a two (2) month period for any interested third parties to lodge an opposition to the trade mark application. Potential grounds for opposition and the opposition process are not dealt with in this article.

If no oppositions are lodged and the opposition period expires, the trade mark can then proceed to registration.

Registration

On payment of the applicable registration fee (presently $300.00 per class), the Registrar will register the trade mark on the Australian Trade Marks Register. Importantly, whilst a trade mark will provide no protection until it is registered, once registered, protection will be granted from the filing date (or an earlier convention priority date, if applicable).

Note: Any fees payable to IP Australia are GST free.

 1.  http://pericles.ipaustralia.gov.au/ols/epublish/content/olsTrademarkPDFs.jsp

The information contained in this article is general in nature only and should not be relied on. You should always seek legal advice about your individual circumstances.

Posted in: Commercial Litigation News at 27 May 16