Australia: Trademarks Comparative Guide

Last Updated: 19 June 2019
Article by Ian Rosenfeld
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1 Legal framework

1.1 What is the statutory or other source of trademark rights?

The Trade Marks Act 1995 (Cth). Rights can also be obtained in trademarks through significant use and reputation.

1.2 How do trademark rights arise (ie, through use or registration)?

Trademark rights arise by registration under the Trade Marks Act, and by significant use and reputation.

1.3 What is the statutory or other source of the trademark registration scheme?

The Trade Marks Act, which covers the whole of Australia.

2 What constitutes a trademark?

2.1 What types of designations or other identifiers may serve as trademarks under the law?

The Trade Marks Act covers ‘signs', which may include any of the following: letters, words, names, signatures, numerals, devices, brands, headings, labels, tickets, aspects of packaging, shapes, colours, sounds and scents.

2.2 What are the requirements for a designation or other identifier to function as a trademark?

It must be used as a trademark (badge of origin) to distinguish the applicant's goods or services from those of others.

2.3 What types of designations or other identifiers are ineligible to function as trademarks?

Only ‘signs', as explained in question 2.1, qualify as trademarks.

3 Registration procedure

3.1 Which governing body (ie, trademark office) controls the registration process?

IP Australia.

3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?

  • Standard trademark with pick list: A$250 per class using online services.
  • Standard trademark without pick list: A$330 per class using online services.

The ‘pick list' is a specified list of goods and services from which to pick, but applicants are free to go outside the pick list if it is too narrow.

The fee covers the whole application and registration process.

3.3 Does the trademark office use the Nice Classification scheme?

Yes - 34 classes of goods and 11 classes of services.

3.4 Are ‘class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?

The applicant must identify the specific goods or services.

3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?

Yes, although a declaration is not required. If the applicant does not have such intention, the trademark registration could be challenged by a third party.

3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?

Yes, pursuant to Section 44 of the Trade Marks Act, based on whether the trademark is substantially identical or deceptively similar to a prior registered or pending trademark in respect of similar goods or closely related services.

3.7 What types of examinations does the trademark office perform other than relative examination?

The trademark examiner will conduct other searches to determine whether the trademark is capable of distinguishing the applicant's goods or services in respect of which registration is sought pursuant to Section 41 of the Trade Marks Act. These searches may include surname searches, internet searches (as to common use) and similar searches.

3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?

Yes - for example, the following cannot be registered:

  • marks that are proscribed in the regulations, such as Olympic marks (Section 39);
  • marks that cannot be represented graphically (Section 40); and
  • marks that are scandalous or contrary to law (Section 42).

3.9 Is there a separate or supplemental register on which descriptive marks may be registered?

No.

3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?

No - an opposition can be brought only once the registrar has accepted an application for registration (and such acceptance has been advertised).

3.11 Must the applicant use the trademark commercially in order to obtain a registration?

The trademark must be used as a trademark within three years of registration, which starts to run from the application date. In general, ‘use as trademark' means use of the trademark to distinguish the applicant's goods or services from those of others.

3.12 How much time does it typically take from filing an application to the first office action?

At present, six months; however, this period was reduced to three months in 2017-18.

3.13 How much time does it typically take from filing an application to publication?

A minimum of seven and a half months, unless there are delays in overcoming adverse examination issues.

4 Appeals

4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?

A refusal can often be overcome through submissions to and correspondence with the trademark examiner (including modifications to the specification of goods or services). If that is unsuccessful, the applicant may, where appropriate, elevate the matter to a senior examiner. If that is unsuccessful, there are rights of appeal to the Federal Court or the Federal Circuit Court.

4.2 What is the procedure for appealing a trademark office refusal?

Application to the Federal Court or the Federal Circuit Court in accordance with the rules of those courts.

4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?

A Federal Court or Federal Circuit Court decision can be appealed by notice of appeal filed in the Regional Appeal Registry. Appeals are to the Full Court of the Federal Court (comprising three or more judges).

5 Oppositions

5.1 Can a third party oppose a trademark application?

Yes.

5.2 Who has standing to oppose a trademark application?

Any person can oppose; but the opponent is generally a party that will be in some way affected by the presence of the trademark on the register.

5.3 What is the timeframe for opposing a trademark application?

Within two months of advertisement of acceptance of the trademark.

5.4 Which body hears oppositions?

The registrar of trademarks (or the registrar's delegate).

5.5 What is the process by which an opposition proceeds?

The steps are usually as follows:

  • The opponent files a notice of intention to oppose.
  • Within a further month, the opponent files a statement of grounds and particulars.
  • Within one month of filing of the statement of grounds and particulars, the trademark applicant files a notice of intention to defend if it wishes to defend the opposition.
  • The opponent then has three months to file evidence in support (by way of statutory declaration).
  • The applicant then has a further three months to file material in response (by way of statutory declaration).
  • The opponent then has a further three months to file evidence in reply (by way of statutory declaration).
  • Either party can request a hearing with oral or written submissions, failing which the matter will be determined on the documents filed.

5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?

Yes, to the Federal Court or the Federal Circuit Court.

6 Rights of registered and unregistered marks

6.1 What, if any, protection is afforded to unregistered trademarks?

No rights are afforded to an unregistered trademark under the Trade Marks Act. However, rights can be acquired through substantial use and reputation. Such rights are generally:

  • common law rights for passing off;
  • misleading or deceptive conduct under Section 18 of the Australian Consumer Law; or
  • misleading representations under Section 29 of the Australian Consumer Law.

6.2 What legal rights are conferred by a trademark registration?

The exclusive right to use the trademark and to authorise other persons to use the trademark in relation to the goods or services in respect of which it is registered.

6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?

Not applicable.

7 Enforcement and remedies for trademark infringement

7.1 What remedies are available against trademark infringement?

The court may grant:

  • an injunction to stop further infringement;
  • at the option of the trademark owner, either damages or an account of profits; and
  • additional damages having regard to flagrancy, misconduct and deterrence.

7.2 What remedies are available against trademark dilution?

There is no official right in relation to trademark dilution per se in Australia. However, owners of famous marks in Australia may have the right to oppose third-party applications for similar marks even when their own famous mark is not registered in Australia.

7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?

Not specifically, other than by redress through claims for damages.

7.4 What is the procedure for pursuing claims for trademark infringement?

Typically, first by way of a cease and desist letter and then, if that is unsuccessful, by instituting court proceedings in various courts in Australia.

7.5 What typical defences are available to a defendant in trademark litigation?

Various defences include:

  • disputed substantial identity or deceptive similarity;
  • disputed use in respect of the applicable goods and services;
  • use in good faith of a person's own name or place of business;
  • use in good faith to indicate the kind, quality, quantity, intended purpose, value, geographic origin or some other characteristic of the goods or services;
  • use for the purposes of comparative advertising;
  • prior rights to the trademark such that the defendant's mark is capable of registration;
  • non-use of the plaintiff's trademark;
  • invalidity of the plaintiff's trademark; and
  • parallel importation of legitimately marked goods where reasonable enquiries as to goods have been made (see question 11.1).

7.6 What is the procedure for appealing a decision in trademark litigation?

Appeal to the applicable appeal court (eg, from the Federal Court to the Full Court or from the Supreme Court to the Court of Appeal).

8 Maintenance and removal of registrations

8.1 What is the length of the initial term of registration and what is the length of renewal terms?

Ten years from the application date (being the priority date), which is renewable every 10 years thereafter, subject to continued use and payment of the renewal fee.

8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?

A simple renewal application and payment of the renewal fee, which is presently A$400 per class (using online services).

8.3 What are the grounds for cancelling a trademark registration?

The registrar must cancel the registration of a trademark if requested to do so in writing by the registered owner (Section 84).

8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?

The registrar may revoke the registration of a trademark if satisfied that the trademark should not have been registered or that it is reasonable to revoke the registration, taking account of all circumstances, such as errors or omissions leading to the registration.

8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?

Application to the registrar.

8.6 What is the procedure for appealing a decision cancelling a registration?

An appeal lies with the Federal Court or the Federal Circuit Court from a decision of the registrar.

9 Licensing

9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?

Yes, the licensor must actually exercise control over the licensee for a trademark licence to be valid.

9.2 Must trademark licences be recorded with the trademark office or other governing body?

No.

9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?

Yes - if the licensor does not actually exercise control over the licensee and is not itself using the trademark, then use by the licensee may be insufficient to qualify as use by the licensor and the registration may therefore be susceptible to removal for non-use, where such non-use has continued for three years.

10 Protection of foreign trademarks

10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?

The owner of an unregistered foreign trademark may be able to bring proceedings for passing off if it can establish that a significant or substantial number of persons within Australia are aware of the foreign owner's reputation.

A foreign owner may also have rights to pursue misleading or deceptive conduct in respect of the trademark if it can prove a sufficient reputation in Australia to establish that use by the third party would be misleading or deceptive.

10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?

Yes, Australia is part of the Madrid Protocol.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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