Introduction to Australia Trademark Registration System
Official Office for Trade Mark Registration
IP AUSTRALIA
Joined International Treaties for Trade Marks
Paris Convention; Trademark Law Treaty; Madrid Protocol; Singapore Treaty
Principle on Trade Mark Protection
Australia adopt mix-principles of “first-to-use?and “first-to-file?for the trademark protection, the Trade Mark Act of Australia mainly protects the registered trademarks, and un-registered marks are protecting by the Common Law.
If an un-registered mark is used by someone else, a court action against the infringement can merely on the ground of “passing-off? In such case, it is necessary to proof that the trademark is famous, and use of the infringe mark may cause confusion and/or misleading to the public.
If a registered trademark is used by someone else without authorization and/or license, the trademark owner can simply take an infringement action, and that the procedure is much simpler.
Kinds of Registrable Trade Marks
In Australia, the term “trade mark?includes word mark, device mark, shape mark, their combination, 3D mark, color per se mark, sound mark, smell mark, and non-conventional trademarks, such as motion trademark.
In addition, there are special trademarks are enacted and protected, such as “certification mark? “collective trademark?and “defensive trademark?
Required Information and Documents
- Applicant’s name, address, nationality / company’s registered country;
- Specimen of the mark to be applied;
- List of goods/services to be applied, and the class(es);
- Translation & transliteration of foreign language in the mark; and
- Priority document, if any.
Timeframe and Procedure for Application
If an application goes smoothly, the whole registration procedure takes about 6-8 months.
A trademark application in Australia usually takes about 3-5 months for examination, if there is no any refusal, it will then publish for 2 months for opposition purpose. If no opposition is filed, an electronic registration certificate will be issued within 1 month after the end of publication.
Duration and Renewal of Registration
A trade mark registration in Australia is valid for 10 years from the date of application, which can be renewed every 10 years, from 6 months before the renewal due date or up to 6 months after the date expires.
Cancellation System
If a registered trademark has not been actual used in Australia by the owner or with his consent, in relation to the goods or services for which it is registered, for a continuous period of at least 3 years, and there are no valid reasons for non-use, any third party can apply for revocation to cancel/remove the registration.
Relevant Information
Australia Trademark Registration Costs and Procedures
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