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Trade Mark Registration Procedure
When an application to register a trade mark is lodged at the Trade Marks Office (a division of IP Australia), with the prescribed filing fee, it is allocated a filing date and a number. When the application is registered, the trade mark is deemed to have been registered from this filing date, or any earlier priority date to which the application is entitled.
The application is examined by the Trade Marks Office for compliance with formal requirements and for eligibility for registration, including that it does not conflict with an existing registration. If there are any objections, an examination report will normally issue within approximately four (4) months of the filing of the application.
The applicant has fifteen (15) months from the date of the first examination report to overcome any objections and place the application in order for acceptance. If the application is not accepted within that period, it will be deemed to be abandoned, unless an extension of time has been granted.
The Registrar will permit amendments to correct minor clerical errors in an application. The statements of goods or services can be restricted, or goods or services defined more precisely during the course of prosecution. However, amendments which substantially affect the identity of the trade mark or extend the goods or services are not permitted.
Once the examiner's objections, if any, have been overcome, the application is accepted and advertised in the Official Journal of Trade Marks. Any interested party may oppose the registration of the mark during the two (2) months following publication of the advertisement. Extensions are only possible in limited circumstances.
If the accepted application is not opposed, or if an opposition is unsuccessful, the trade mark becomes registered, following the payment of the registration fee.
Registration is for an initial period of ten (10) years from the date of application and may be renewed for further successive periods of ten (10) years on payment of a renewal fee.
The trade mark need not be in use in Australia when the is made; an intention to use the trade mark in the foreseeable future is sufficient. However, sufficient use of the trade mark prior to the filing date may be relevant if the examiner considers that the trade mark lacks distinctiveness. It is not necessary to prove use of the mark in Australia in order to achieve registration, nor is use of the trade mark a prerequisite to renewal of the registration.
A trade mark may be removed from the register on the application of an interested party if the trade mark has not been used by either the registered proprietor or an authorised user for a continuous period of three (3) years.
There are no requirements in Australia for traders to identify whether a mark is being used, or is registered, as a trade mark. However, we suggest that before an application is made to register the trade mark, the words "trade mark" or letters "™" be placed beside the mark whenever it is used. Once the trade mark is registered the words "Registered Trade Mark" or some suitable abbreviation such as "Reg'd TM" or “®” can be used in conjunction with the mark. To describe a mark as "registered" before registration actually takes place constitutes a breach of the Trade Marks Act, and may also contravene Trade Practices Act prohibitions in respect of misleading and deceptive conduct.
Updated October 2015
