The process for trademark registration in Australia is done in accordance with the stipulations of the national law. If you want to protect your intellectual property rights on the Australian territory, you will need to register your trademark, following the standard application process.
Our Australian law firm can assist you in this matter and can also present you the rights you will have once you will register your trademark.
Please mind that the process of trademark registration in Australia can be very beneficial to an entity, be it a natural person or a corporate body, as through this procedure, the respective brand, product, jingle, logo, etc., can be protected against other parties.
More than this, can help in the situation of a litigious case on intellectual property matters; our Australian lawyers can provide legal representation in this matter as well.
|What constitutes a trademark in Australia||
A trademark can be represented by letters, words, numbers, images, logos, sounds, scents, shapes.
Trademark law in Australia
|Trade Marks Act 1995, Trade Marks Regulations 1995|
Institution regulating intellectual property matters
|International intellectual property laws recognized in Australia||Australia is a member state of the World Intellectual Property Organization and it applies all its treaties.|
Who can file for trademark registration
|Individuals, organizations, companies, charities and other structures recognized under the Australian law.|
Types of trademarks that can be registered
There are multiple types of marks available for trademark registration in Australia: certification trademarks, series of trademarks, trademarks for colors, shapes, scents, for movements, for plants, etc.
Documents required for trademark registration
The application form, the payment of the application fee, information on the applicant, the representation of the trademark, the description of the goods and/or services protected by the trademark, the classes of goods and services.
|Steps to be followed after the trademark application is submitted||Examination (3-4months) – e-mail notification (for successful applications) – Opposition (2 months) – registration of trademark (where no opposition situations appeared).|
|The validity of the trademark registration||10 years|
|The duration of the registration procedure||3-4 months for the examination, 2 months for the opposition.|
|Renewal of trademark available (yes/no)||Yes|
|Procedure to acquire international protection of trademark||Addressing individually to the authorities of each country, or making a request through the Australian authorities, which will initiate the Madrid Protocol.|
|Opposition period||2 months|
|Registration fee applicable (yes/no)||Yes|
|Legal services offered for trademark registration||Legal advice and representation on copyright laws, IP audits, due diligence, litigation, trademark registrations, etc.|
How can one register a trademark in Australia?
The procedure for trademark registration in Australia is done following the procedures imposed by the Australian Government – the Intellectual Property Australia Office.
First, you will have to verify whether your intellectual property good constitutes a trademark, as not all signs and other intellectual property products can be considered trademarks.
If you do have a trademark, then you will have to select the services or the goods for which the respective trademark will be used. The trademark can be used for both goods and services, but they will have to be grouped into categories.
Then, after this procedure is completed, you will have to verify if the trademark you want to register is not already used on the Australian territory by another party.
If this step is successfully completed, then it means that you can start the trademark registration in Australia, by using any of the methods that are currently available for local and foreign entities.
The Intellectual Property Australia Office offers three options for online registrations, so it should be a straightforward process.
However, it is necessary to know that each option has its own fees and that each application system provides different services.
You must also know that the legislation does not impose a mandatory trademark registration, but if you will not register your trademark, it will be much more complicated for you to make claims if you discover that someone else is using your logo or another intellectual property product.
After you complete all the steps mentioned above, the Australian institutions will start the examination procedure, through which they will verify if the trademark meets the standards of the law; if you need assistance on this matter, please address to our Australian lawyers.
What is the law on trademark registration in Australia?
There are more legal acts that are related to the protection of intellectual property in Australia. Trademarks which are not registered can be protected in a litigation case under the Section 52 of the Trade Practices Act 1974.
Registered trademarks fall under other rules of law, which regulate matters from trademark registration in Australia, to fees charged by the institutions, the rights of the regulators, the rights of the parties owning trademarks and others. Below, you can find few important details:
- a trademark is defined under the rules of the Trade Marks Act 1995;
- once the process of trademark registration in Australia is completed, the trademark will be protected for a period of 10 years;
- the minimum fee for the standard registration is of $250;
- the registration through the TradeMark Headstart service, which provides extensive services, is charged with minimum $330;
- if you want to import a wine trademark in Australia, you will need to comply with additional rules, prescribed by the Wine Australia Corporation Act 1980 and observe the requirements of the Class 33 (Australia follows the Nice International System of Classification, which contains 45 classes).
What are the trademark classes in Australia?
When you will start the process of trademark registration in Australia, you will also have to select a class (or more) of goods and/or services for which the trademark is created.
As presented above, Australia applies the Nice Classification system, that is comprised of 45 classes.
First of all, it is important to know that the classification system is comprised of 2 main categories. The 1st one refers to goods, and the 2nd one refers to services.
The goods categories cover the classes of 1 to 34, while the services classes are from 35 to 45. A class of goods or services includes many subclasses of goods/services. Together, they cover all the business activities that can be found on the Australian market.
For instance, Class 1 refers to the chemicals used in the various industries such as science, agriculture, photography and other industries. Class 5 contains products used in the pharmaceutical industry, veterinarian industry, herbicides and various types of supplements.
Class 30 contains goods such as coffee, sugar, rice, pasta, sauces, seasonings and other types of food products, while class 33 refers to alcoholic products.
When you will start the trademark registration in Australia, you may need assistance in observing the correct class category for which your trademark is designed for. Of course, you can always rely on the legal services of our Australian lawyers.
Please mind that, depending on your business activities, you may need to select more classes of goods and services. When registering the trademark, you can register it for both goods and services.
Choosing the right classes can be a difficult endeavor and it is recommended to select more classes, especially if you want to expand your business over the years to include more types of services/goods.
Can a trademark be cancelled in Australia?
Yes. Even though a person/business has successfully completed the procedure for trademark registration in Australia, this doesn’t mean that the trademark will remain protected for an undetermined period of time.
As mentioned above, successful registrations are protected for a period of 10 years, and after the end of this period, a renewal is possible. However, the owner of a trademark can lose the right to have a trademark protected in Australia if he or she does not use the respective trademark.
Each country has its own time limit concerning this, and in Australia it is of 3 years. This means that if the owner of a trademark simply registers a trademark and then does not use it in a period of 3 years, any third party can request the cancellation of the respective mark.
Also, if the trademark has been used for a period of time, the owner of the trademark can lose the rights if the sign has not been used for 3 years since the date since the trademark has last been used.
Is it possible to add additional classes to a registered trademark?
Yes, the law in Australia grants the right to modify an initial trademark application, according to the Intellectual Property Australia.
However, this happens very rarely. For those who want to add an additional class of services or goods on their trademark application, a fee will be charged.
The cost per class is of $450, which is an additional cost added to the initial fees charged to the applicant.
Mind that the institution charges different fees for series trademarks, which refer to more trademarks which are very similar in most of their aspects, but which are different in their non-distinctive characters.
The series trademarks belong to the same owner, and they define the same services/products. We invite you to address to our law firm in Australia if you need more information as to what series trademarks can be.
How long does it take to register a trademark in Australia?
Once you have completed the application and you sent the required papers, the application itself will be processed in a period of 3 to 4 months, but it is very common for delays to appear.
In the case in which the application is successful, the applicant will receive an e-mail through the online services used for the trademark registration in Australia.
Once the trademark is accepted, another process will begin, through which, for a period of 2 months, the product will be open to opposition, a procedure in which any third party may oppose to its registration for various legal grounds.
Our team of lawyers in Australia can present the legal grounds regarding the opposition of the trademarks. For more details, please contact our Australian law firm.