Trade Mark Registration
An Applicant can register a trademark in respect of goods, services, or both goods and services S19(1) and may be in respect of goods and/or services in more than one class. A flowchart setting out the registration process is found within the Act, however a helpful overview of the trade mark application process is found on the IP Australia website.
The application should be made in the name of the individual, or if a business, in the name or names of all persons who own a business name registration, or if the business is an incorporated entity, its company name.
The Application must include a representation or a concise and accurate description of the trade mark where the trade mark consists of a colour, scent, sound, shape or aspect of packaging. r4.37. As a graphical representation is required, and a suitable form of graphical representation needs to be found.
The main elements, feature and scope of the trade mark claimed must be clear to the public, the Examiner, the public and be searchable. With respect to a sound recording, a recording or CD may be appropriate, a three dimensional shape mark, a 3D perspective or isometric drawing in addition to a sample, ensuring that the drawing shows all features of the shape, with solid lines highlighting the claimed parts, the unclaimed parts remaining in unbroken lines.
The description of the trade mark will be entered as an endorsement accompanied by the graphical representation, which will help define the boundaries of the trade mark claimed. There are provisions with respect to the appropriate dimensions of the depiction, although the critical consideration is that the application show all of the features of the trade mark clearly. It is critical to ensure that the description clearly delineates the scope of the trade mark.
Specification of the goods and/or services
The Applicant must specify the goods and/or services in respect of which they seek registration of the mark, in conformance with the prescribed regulations (r4.4) grouped by reference to the classification system for trademarks in the Regulations.
This classification system contained in Schedule 1 of the Regulations derives from the Nice Agreement, an International arrangement to which Australia has acceded.
A class number must be nominated for each group of goods or services, and where more than one, the classes grouped together according to class and listed in ascending order of class number.
Where the Applicant can’t describe the goods and/or services according to the Nice Classification and adequate information must be given as to the nature of the goods/services to enable the Examiner to allocate them to a class. Section 32 of the Act gives the Registrar the power to determine questions relating to the appropriate class goods or services should be comprised within in the event of a disputed classification, except with respect to Madrid Protocol Applications. Multi-class applications will be checked by the Examiner to ensure that the goods/services grouped into each nominated class are properly classified.
If there are misclassifications detected by the Examiner, they will be specified in their first report, and the applicant will need to decide whether they wish to delete them or pay additional fees to add them to another class.
There are 45 classes and the system is used by Examiners conducting searches for the purposes of locating marks which may conflict with the applicant’s marks under S44. However the Examiner’s searches are not confined to the specified classes. They extend to other classes in respect of related goods and services.
The Trademarks Examiner will determine whether there are any grounds for objection of the trade mark. S31. For this reason, it is recommended, at a minimum, that a search be conducted of the IP Australia Online Trademarks Database (ATMOSS), including cross searches, as well as the Australian Security And Investment Commission (ASIC) database of company and business names. As recommended in the section on Trade Mark searches, research prior to registering a trade mark should ideally be more broadly conducted to ascertain the existence of any unregistered trademarks similar to the trademark you are contemplating using.
If you find, when conducting your trade mark searches, that somebody has previously registered a trade mark which is identical or similar to your proposed name, this doesn’t necessarily preclude you from using or registering it. This is because every trade mark registration and application will have an associated description of the goods or services covered by the registration or application. Another name may be identical to yours but the product or service it is applied to may be completely different.
Even if you discover a conflicting registration with a very broad description of goods or services similar to the description of your product or service, it still doesn’t necessarily mean you won’t be entitled to use the mark. You can apply to have the register rectified and limit the description of goods and/or services changed to reflect those that you actually provide under the trade mark.
Searches can by conducted using NICE classification terms, but bear in mind that changes can be made to the NICE classifications when trying to locate potentially conflicting trade marks. This is another good reason to search across classes. The classification search and list of headings will provide searches of goods and services descriptions included in the Nice Classification list as well as IP Australia’s Office Determinations. A pending or registered trade mark with an incorrect specification or class number may not be found when conducting a trade mark search for conflicting marks on the ATMOSS database.
The Applicant has the onus of ensuring classifications are not vague, non-descript or overly broad, particularly where this results in an application which defies classification. The IP Australia Office Determinations should assist applicants who are experiencing difficulty in classification.
The Application may be be rejected with grounds, direct amendments, or the Examiner may accept the application subject to conditions or limitations. Conditions aren’t defined in the Act, but the power to impose limitations on registration refers to the power to impose limitations as to the manner of use, or use within a particular territorial area of Australia or in relation to goods or services intended for export S6. An appropriate endorsement will be entered into the Register to clarify the scope of the restriction imposed. Under S33(1) an Application must be accepted unless it hasn’t been made in accordance with the Act or there are grounds for rejection.
When a decision is made it will be notified to the Applicant and if approved advertised in the Official Journal of Trademarks. S34 for a period of 3 months, during which time it is open for third parties to oppose your application. Your application will be registered if no oppositions have been filed or once any objections received have been settled. The fee must be paid no later than six months from the date acceptance is advertised. Although there is no set time for the application process, the office generally takes about 13 weeks to approve a trade mark. You will receive a Certificate evidencing your title to your trade mark.
The Examiner’s report will explain any problems or defects in your application if it is not accepted, and you will have 15 months to overcome these objections, subject to extensions being granted.
If you are applying for a trade mark which is a combination of words and a logo (combination trade mark), it is recommended that you register the words and the logo as separate marks to give you the broadest protection. Another practical advantage is that even if you decide to transform your logo you will still retain protection for the words in your combination trade mark.
Except in the case of International or Convention Applications, the relevant date for the purposes of registration is the filing date S72(1)which serves as the ‘priority date’ for the trademark. Once your trade mark is registered and all fees are paid, it will be enforceable and can be renewed indefinitely, provided you pay the fees every ten years. The date of registration of your trade mark is the date of application. A full list of fees associated with application, registration and other processes is set out here.
Once your trade mark is registered it can no longer be opposed by a party, however action can still be taken to remove your trade mark from the register if you have not been using it (s92(4)(b), and/or in the Courts if a party accuses you of infringement, passing off or misleading and/or deceptive conduct in the use of your trade mark.
TM Headstart is an online service provided which can help you assess the registrability of your proposed trade mark. Upon payment of a fee you will be contacted within five days discuss the results of the assessment and options for consideration. TM Headstart is not a service that you would use other than for a standard trade mark application. Using TM Headstart doesn’t mean that you can expedite the trade mark application process, and as with a standard application, the earliest your trade mark can be registered is seven and a half months after you pay the relevant fee. One of the key differences is that TM Headstart permits you to make modifications to your trade mark and the goods and/or services covered by your application up to the point you pay your fee, whereas the scope to amend the trade mark filed us you to make some modifications to your trade mark and the goods and services, whereas with a standard application for a trade mark you cannot extend the goods and services and only minor amendments to your trade mark are permitted. TM Headstart is an assessment service although no guarantees can be provided and it is not a substitute for legal advice.
A divisional application is a second trade mark application which is based on the parent application. Essentially there will be two trade mark applications on foot. Filing a divisional application is a device used by some applicants in the event that during the examination phase of the application, the Examiner raises objections to the application. In order to defeat the objections applications may be able to divide their application in order to enable the trade mark application to receive accepted for a more limited sub-set of the goods or services claimed in the initial application. The other earlier application still remains in progress. Consequently, a divisional application can only be filed for some of the goods or services included in the parent application. When filing a divisional application you must stipulate which goods and/or services are to remain in the parent application.
International Trade Mark Applications
When applying to register your trade mark internationally, you may elect to file an application with each country, or alternatively file a single international application with IP Australia, setting out the Madrid Protocol countries in which you are seeking protection. The Madrid Protocol is a treaty that provides for international registration of trade marks and is administered by the International Bureau of the World Intellectual Property Organisation in Geneva.
If you are seeking trade mark protection in other countries which are members of the Madrid Protocol, there are benefits to making a single international application in English. It is simpler and less expensive than applying to register your trade mark in each country.
WIPO has online services, such as the Madrid Real Time Status (MRS) enabling you to access the status in real time of the processing of your trade mark applications by WIPO. Once registered, you are able to change the ownership of your trade mark provided the new owner is eligible under the Madrid Protocol, in that they live in, are a national of or have a real commercial presence in a Madrid Protocol country. You may wish to assign ownership for some of the countries your trade mark is registered in, and or some of your goods and/or services, whilst still maintaining the international registration.