The Trade Marks Act 1995 (Cth). Rights can also be obtained in trademarks through significant use and reputation.
Trademark rights arise by registration under the Trade Marks Act, and by significant use and reputation.
The Trade Marks Act, which covers the whole of Australia.
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.
It must be used as a trademark (badge of origin) to distinguish the applicant’s goods or services from those of others.
Only ‘signs’, as explained in question 2.1, qualify as trademarks.
IP 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.
Yes - 34 classes of goods and 11 classes of services.
The applicant must identify the specific goods or services.
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.
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.
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.
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).
No.
No - an opposition can be brought only once the registrar has accepted an application for registration (and such acceptance has been advertised).
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.
At present, six months; however, this period was reduced to three months in 2017-18.
A minimum of seven and a half months, unless there are delays in overcoming adverse examination issues.
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.
Application to the Federal Court or the Federal Circuit Court in accordance with the rules of those courts.
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).
Yes.
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.
Within two months of advertisement of acceptance of the trademark.
The registrar of trademarks (or the registrar’s delegate).
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.
Yes, to the Federal Court or the Federal Circuit Court.
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.
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.
Not applicable.
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.
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.
Not specifically, other than by redress through claims for damages.
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.
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).
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).
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.
A simple renewal application and payment of the renewal fee, which is presently A$400 per class (using online services).
The registrar must cancel the registration of a trademark if requested to do so in writing by the registered owner (Section 84).
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.
Application to the registrar.
An appeal lies with the Federal Court or the Federal Circuit Court from a decision of the registrar.
Yes, the licensor must actually exercise control over the licensee for a trademark licence to be valid.
No.
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.
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.
Yes, Australia is part of the Madrid Protocol.
