LEGAL ESSENTIALS GUIDE TO

Trade Marks - Australia

smart law for business

Contents

Legal Essentials Guide to Trade Marks - Australia

Overview

Trade Marks

Names and Domains

Before applying

Trade Mark Search

Filing the Application

Government Examination

Registration and Rights

International Registration

Infringement

Scope of Work

10

How can LegalVision help me?

11

Trade Marks Legal Guide Australia

Why?
Intellectual Property (IP) is a vital asset that adds value through brand
identity and consumer recognition.

How?
This guide sets out the steps for registering your trade mark, the
associated fees, and what to do if you receive an adverse report.

Trade Marks
What is a trade mark?
A trade mark is a sign used to distinguish one traders
goods and services from those of other traders. A trade
mark can be a letter, number, word, business name,
phrase, sound, smell, shape, logo, picture and/or aspect
of packaging.

What is the process of registering

a trade mark?

Trade Marks Legal Guide Australia

Why register a trade mark?
A registered trade mark is legally enforceable.
It provides its owner with exclusive rights to use or
licence the trade mark in relation to the goods or
services for which it is registered. An unregistered
trade mark has less protection, though it may have
some protection under laws on misleading or
deceptive conduct and passing off.
There are other benefits to trade mark registration:
national protection protection throughout
Australia;
visibility A registered trade mark is a deterrent
to misuse by competitors;
creation of an asset A trade mark is an asset
that can be licensed or sold;

reduced costs of future enforcement; and

simplified international registration.

Can someone register a similar

trade mark?
A similar trade mark may be registered when:
the trade mark is registered for different and
unrelated goods or services; or
the trade mark was used and promoted (and
continues to be used) before you sought trade
mark registration, even if it was in relation to the
same or closely related goods or services.

Names and Domains

Tip: What does having a business,
company or domain name mean?
Registering a company or business name gives you rights
to use that name, but does not generally give you rights
to stop someone using the same or a similar name. It
may, however, be evidence of use of your mark that can
be used to overcome an objection to registration of your

trade mark. If you are yet to register your business name

(also known as a trading name) or company name let us
know if you require assistance and we can provide you
with a fixed fee quote.

Before applying
Is your trade mark registrable?
Your trade mark needs to:
distinguish your goods and services from those
of other traders.

not conflict with an existing trade mark; and

not be prohibited.

Is it prohibited?
Some trade marks are prohibited by law in Australia. For
example you cannot register:
trade marks that contain certain words or
symbols, such as the Olympic Rings, the words
Registered, Austrade, or Returned Airman
(amongst others), or the Arms, flag or seal of the
Commonwealth or of a State;
trade marks that are scandalous or contrary to
law; and

trade marks that are likely to mislead or deceive.

Scandalous trade marks are, ones that are offensive to

other people (not necessarily simply in poor taste or
rude but truly offensive) such as trade marks that include
offensive and/or abusive elements that are personal,
religious or racial in nature.
For a trade mark to be considered misleading or
deceptive, there must be an element that is misleading
or deceptive up front. For example, if you were to
attempt registering a trade mark that included a domain
name that you didnt own, this would be deceptive.
If you tried using a celebritys name in your trade mark
but didnt have permission to do so, this would also be
deceptive, as you would be suggesting an affiliation or
endorsement that doesnt exist.

Trade Marks Legal Guide Australia

Who can own a trade mark?

1.Filing the Application

Making an application is confirmation to the trade mark

office that you use, or intend to use the trade mark for
the specified goods/services. The rightful owner is
usually the one that adopted the trade mark, or has
permission to file on behalf of another person. A trade
mark can be challenged by other parties if they believe
that you are not the rightful owner of the trade mark,
or that the application has been made in bad faith.

What classes does your

goods/services fall under?

The owner must have a legal status such as an

individual or group of individuals, or an incorporated
body (such as a Pty Ltd or Limited company).
A business name cannot own a trade mark.

Trade Mark Search

Why do a trade mark search?
Before you apply to register a trademark, do a
trademark search to ensure your chosen trade mark
is available and is not infringing anyone elses rights.
The official examination with the government office
once you file an application can take approx. 4 months.
Undertaking a search identifies any issues with the
registration upfront.

What types of searches are available?

1. Identical search: Search to see whether there is
any identical trade mark already registered in
Australia to your chosen name, for the same/
closely related goods or services.
2. Register Search: Search the Australian trade
mark database for any identical trade marks, or
deceptively similar trade marks already pending
or registered in Australia that may be raised as
too similar to yours.
3. Full Availability & Infringement Search: Search
to see whether there are likely to be trade marks
that could conflict with yours; whether there are
any other areas of the Trade Marks Act that may
see your trade mark as not registrable, whether
there are existing businesses in Australia who
have used the same name for a while and have
prior rights and general Internet Searches.

When you file an application you must choose

classes of goods/services. All goods and services
fall into classes categorised under an international
agreement. The list of classes and the goods/services
that fall into them have been adopted by a majority
of countries around the world. There are 45 of these
classes to select from. Numbers 1-34 cover goods
and numbers 35-45 cover services. When we help
you register your trade mark we provide our
recommendation on which classes you require

What is a series of trade marks?

It is possible to request registration of a series of trade
marks. This is allowed when you have two or more trade
marks that closely resemble each other and differ in
respect of only one or more of the following ways:

s tatements or representations as to the goods or

services in relation to which the trade marks are to
be used e.g.:

XYZ clothing

XYZ footwear

XYZ accessories.

statements or representations as to number, price,

quality or names of places e.g.:

XYZ Sydney

XYZ Melbourne

XYZ Perth; or

the colour of any part of the mark e.g.:

XYZ

o XYZ
o XYZ.

Trade Marks Legal Guide Australia

Types of Applications

Next steps:

1. Paper Filing
(most expensive and not used by LegalVision).

1. If an Adverse Report is issued you will be given

15 months to respond and address the issues so
that your trade mark is in order to be approved.

2. Pick List Filing: this means we select goods/

services from a government generated pick-list
for each class of your trade mark application
using their terms and definition (least expensive
government fee).
3. Own Specification Filing: this allows us to
draft the goods/services in our own words
rather than use the pick list. This can be useful
when you have an unusual product/service that
does not meet common definitions, or if we
need to draft your specification in a way that
avoids conflict with another trade mark (more
costly than Pick List).

2. Government Examination
What will the government
examination check?
The Trade Marks Examiner will examine all of the
details to ensure that:

the basic filing requirements are met; and

your trade mark is registrable.

This process currently takes approximately 4 months.

If no problems are found during examination we will
receive Notice of Acceptance. If issues have been
identified, we will receive an Adverse Report.

What is an Adverse Report?

If an Adverse Report is issued, and you have had a full
search and assessment conducted before filing, the
issues raised will not come as a surprise. The most
common reasons for the trade mark office to object to
your trade mark being approved are:

2. We encourage any applicant that receives

a report to respond to it as soon as possible.
3. If left too late you may need to request
(and pay for) an extension of time past
the 15 months allowed.

How do I respond to an Adverse Report?

You need to:
1. provide evidence of use (or in some cases, intent
to use) your trade mark;
2.

refine your goods/services to remove the issue;

3. in some cases, negotiate with owners of earlier

trade marks; or
4.

provide evidence of other circumstances.

LegalVision will advise, based on your situation the

best and most likely to succeed option. This advice is
included in your application fee detailed below.

What is a Notice of Acceptance? (approval)

If no issues are found during the government
examination of your application (or if you successfully
address any issues that are raised) a notice of acceptance
will be issued.
This will set out the date on which the acceptance of
your trade mark will be advertised in the Official Journal
of Trade Marks. The advertisement of acceptance
starts a period of time during which other people may
lodge formal objections to your trade mark becoming
registered, if they believe they have grounds to do so.

your trade mark conflicts with a trade mark that

has an earlier date than your own; or
your trade mark is not automatically seen as
capable of distinguishing your goods/services
from those of other traders.

Trade Marks Legal Guide Australia

What is the Advertisement period?
Once advertised, other people have 2 months
from the date of advertisement to file a notice of
intention to oppose.
After a notice of intention to oppose has been
filed, the opponent must then lodge their
statement that sets out the grounds, and
particulars upon which they oppose the trade
mark.
If no opposition is lodged, and no extension of time in
which to lodge an objection is granted, your trade mark
can progress to full registration.

What if someone opposes?

If someone files a notice of an intention to oppose your
trade mark becoming registered during the period
allowed (or within an extended period if they request
such an extension) we will be notified by the Trade Marks
Office.
There are a number of grounds an opponent may select
and advise when filing their statement of grounds and
particulars including:
the same grounds that the examiner may rely
on to issue an adverse report;
claiming that you are not the owner of your
trade mark;
claiming that it is too similar to a trade mark
that has acquired a reputation in Australia; or

You must file this notice of intention to defend

within 1 month of the opponents statement of
the grounds on which their opposition relies.
After filing a notice of opposition, the opponent
has 3 months to file evidence in support of that
opposition, in an attempt to prove that the
grounds they have selected are true.
You then have the opportunity to provide
evidence in answer to the evidence they have
supplied. You have 3 months to do this.
The opponent then has a final chance to supply
further evidence before the matter is decided.
This final evidence must be filed within 2
months.
A decision may happen simply by a government officer
considering both parties evidence, or either of the
parties can request to be heard in the matter.

What happens after a determination is

made?
The successful party in opposition is able to request
an award of costs in their favour. This means, the
unsuccessful party may be ordered to pay a certain
amount of the winning sides costs. All costs are
determined by a set schedule.
If your application is opposed we will notify you
immediately upon LegalVision being informed, and
provide advice, recommendations and fee estimates
based on your particular case.

claiming that it includes false geographical

indications, amongst other grounds.
If the opponent does not file the grounds and particulars
within 1 month of the notice of intention to oppose, or
seek further time, then the opposition will be dismissed
and your mark will progress as normal.

How do I respond to a notice of

opposition?
You need to file a notice of your intention to
defend against the opposition. If you do not
do so, then your trade mark will lapse and the
opponent will effectively win their opposition.

Trade Marks Legal Guide Australia

3. Registration and Rights
What happens once my application
is accepted?
If your trade mark is accepted for registration and is
not opposed by a third party (or, if you are opposed
but come out as the successful party) the trade mark
can then proceed to registration. In a straightforward
case, the minimum time period from application to
registration is 7.5 months.

How long does registration last?

The initial period of protection is for 10 years from the
date the Application was first filed. You can renew this
every 10 years if you desire and are still using your trade
mark. It is important to note that trade marks can be
vulnerable to removal if they remain unused for a
certain period of time.

Where will the Trade Mark be protected?

Your trade mark will be registered Australia-wide. You
have Australia-wide rights unless particular limitations
are placed on your trade mark, which usually would
occur to resolve objections or opposition matters.

What rights do I have

as a trade mark owner?
The main rights that come with a registered trade mark
are as follows:
the right to use your trade mark, in Australia,
in connection with the goods/services it is
registered in respect of;
the right to authorise the use of your trade
mark in Australia, in connection with the goods/
services it is registered in respect of (e.g. in a
licensing situation, or franchise situation etc);
the right to take infringement action against
other persons that use your trade mark (or a
deceptively similar trade mark), in Australia in
connection with the same or related goods/
services without your permission, and are
found to be infringing upon your rights;

the right to claim your trade mark is

registered, and use the trade mark with the
symbol. A person cannot claim or represent a
trade mark as registered, or use this symbol, if
its not registered. In fact, its an offence to do so.

International Registration
How can I register my
trade mark internationally?
1. You can file national applications, directly to each
country of interest. In some cases, this will be the
only option; or
2.

Y ou can file through the Madrid Protocol

a system of international trade mark registration of
which Australia is a member. This allows you to file
a single application and choose which of the other
member countries you wish to apply in. (As at April
2015 there are 94 countries available through this
system.) Please contact us for further information
on international trade marks.

Tip: P
 riority period for Australian applicants
The date of your earliest application for a particular
trade mark is known as your priority date. If you file
overseas within 6 months of this date you are entitled
to claim (in most countries) priority, so that each
international application will be treated as though filed
at the same time as your Australian application. This will
provide you with preference over any application filed
during that time with a later priority date. This provides
a good window of time to plan and budget for any
overseas trade mark requirements.
This is a strict six month period, and cannot be extended.
If you file later than 6-months you will lose the right
to claim priority based on your earlier Australian
application and each foreign application would then
be treated as filed on the precise physical filing date.

Trade Marks Legal Guide Australia

European Community Trade mark

Infringement

A Community Trade Mark (CTM) extends to all

member countries of the European Union and can
be achieved by filing a single application (or, selecting
it as a single designation under the Madrid Protocol).
If approved, you will gain the same level of protection
and right as you would by filing into each European
Union member separately. However, its important to
note that because it is a single application, a rejection
due to a problem in one-member country will affect
the entire CTM application.

How to do I protect my trade mark?

Trading on the Internet

Remember that trading on the Internet places you in
a global marketplace. Trade mark rights apply countryby-country, and use of your trade mark on the Internet
could inadvertently infringe the rights of someone in
another country.
Australia, along with other member countries of
the World Intellectual Property Organisation have
established guidelines to help protect trade mark
owners when doing business over the Internet. Please
let us know if you would like more details on this.

Importing Goods
It is possible to lodge a notice with the Australian
Customs and Border Protection Service (ACBPS) to
formally object to the importation of goods that infringe
your registered trade mark. This is administered by the
ACBPS. If goods are imported that infringe your trade
marks they will be seized by Customs. You then need to
determine whether they are to be released or not and
pay any relevant fees. More information can be found on
the Customs website here: http://www.customs.gov.au/
businesses/CustomsNotices.asp.

It is the trade mark owners responsibility to monitor

for infringement and determine if action is required.
We have a trade mark monitoring service. Let us know
if you would like information about this to help identify
infringing activity or conflicting applications filed after
your own.
If you suspect your trade mark rights are being infringed
please contract LegalVision. There are circumstances
that allow people to defend an allegation of
infringement, so always seek professional advice before
making any threat of infringement action.
If you have received communication from another party
stating that you are infringing their rights, please contact
us for advice.

Tip: Use it or lose it!

You need to use your trade marks as they are vulnerable
to removal if they remain unused for a period of time.

Use it correctly
Use your trade mark the way it has been registered. It is a
punishable offense to display a trade mark as registered
(including by using the symbol) if it is not registered.
Use your trade mark as an adjective, it is not a noun:
Correct: We import and distribute XYZ shoes.
Incorrect: We import and distribute XYZs.

Trade Marks Applications - Scope of Work

Initial Consultation
Scope of Work

A review of your business and up to 30 minute consultation with a trade marks lawyer to help
you work out:
What trade mark(s) should you apply for?
How many and what classes do you need?
What goods/services you should cover?
Is your trade mark a valid trade mark?

Trade Mark Application

Scope of Work
An initial call to discuss your trade mark application
A pre-filing assessment* of your trade mark for registrability under the Trade Marks Act, covering:

Is your trade mark sufficiently distinctive?

Are there any conflicting trade marks?
Are there any other reasons your trade mark may not be accepted?

$400.00 per class is refundable if you do not wish to proceed after initial assessment.

Complimentary
Reviewing and reporting filing, examination, and advertisement, diarising dates and deadlines and
acting as Address for Service until registration or application lapsed
Payment of $130.00 Part 2 fee for TM Headstart Request to convert the TM Headstart Request to a Full
Application
A complimentary discussion with our Client Success team to discuss your business and any
further business needs, including IP, IT, business structuring, commercial contracts, employment,
franchising, capital raising and disputes
Finalising registration, receiving and forwarding registration certificate and acting as address for
service for 10 years. Scope is complete once registration fees have been paid to IP Australia
*Our application service includes trade mark filing through the TM Headstart service (available in most cases). This
provides a fast-turnaround indication of whether your trade mark will be accepted, as well as expedited examination
once submitted. A TM Headstart request is not a full trade mark application until after the results are received and
responded to appropriately. If the TM Headstart service is unavailable for your application we will notify you and
perform an initial registrability assessment ourselves before lodgement

10

Do you require assistance registering

your trade mark?
Weve helped many businesses register their trade
marks and it would be our pleasure to assist you.
We provide fixed prices for your certainty
and peace of mind.

Contact LegalVision today

T: 1300 544 755 | E: info@legalvision.com.au | legalvision.com.au

Important: LegalVision ILP Pty Ltd owns the copyright in this document and use without permission is prohibited. This information is
current as at 1 January 2015. This is a summary and a general overview. It is not intended to be comprehensive and it is not legal advice.
This does not create a solicitor-client relationship between you and LegalVision ILP Pty Ltd.