Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
Trademarks
3.
Registration procedure
3.1
Which governing body (ie, trademark office) controls the registration process?
 
Australia
IP Australia.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.2
What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
 
Australia
  • 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.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.3
Does the trademark office use the Nice Classification scheme?
 
Australia
Yes - 34 classes of goods and 11 classes of services.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.4
Are ‘class-wide’ applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
 
Australia
The applicant must identify the specific goods or services.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
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?
 
Australia
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.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.6
Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
 
Australia
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.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.7
What types of examinations does the trademark office perform other than relative examination?
 
Australia
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.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
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?
 
Australia
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).
For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.9
Is there a separate or supplemental register on which descriptive marks may be registered?
 
Australia
No.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
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)?
 
Australia
No - an opposition can be brought only once the registrar has accepted an application for registration (and such acceptance has been advertised).

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.11
Must the applicant use the trademark commercially in order to obtain a registration?
 
Australia
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.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.12
How much time does it typically take from filing an application to the first office action?
 
Australia
At present, six months; however, this period was reduced to three months in 2017-18.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers
3.13
How much time does it typically take from filing an application to publication?
 
Australia
A minimum of seven and a half months, unless there are delays in overcoming adverse examination issues.

For more information about this answer please contact: Ian Rosenfeld from Rigby Cooke Lawyers