Filing the application
Regulation 4.1 of the Trade Mark Regulations provides that applications must be in an ‘approved form’. To prepare and file the client’s application for a trademark the following information is required:
− applicant’s legal name, description and principal place of business;
− a clear representation of the trademark that can be photocopied or printed;
− if the trademark is a sound or scent, a detailed description of the trademark;
− if the trademark is a three-dimensional shape, a graphical representation of the trademark from each aspect;
− a list of the goods and services upon which an applicant proposes using the trademark;
− a translation of any part of the mark that is in a language other than English;
− if priority is to be claimed pursuant to the Paris Convention over an earlier application in another jurisdiction, the details of that prior application; and
− the required fee.
Practitioners are able to sign the application on the client’s behalf.
Once instructed to apply, there are three methods, with each attracting its own fees:
- ‘Test the water’ using TM Headstart. Prior to filing a trademark application one can request an assessment of the likelihood of the trademark achieving registration through TM Headstart. It contains a goods and services pick-list which helps to nominate the goods and services in their correct classes and will calculate necessary fees. A subsequent trademark application may also be filed using this service. This is recommended where there is a degree of uncertainty as to whether the client’s mark will be considered too similar to another registered trademark or where the mark might be considered too descriptive or generic to register.
The TM Headstart website states as follows:
This service gives you an assessment of your trademark application and will help you identify any problems it may contain before you publicly file.
This service does cost extra but it may save you money in the long run, as trademark applications filed that contain errors are often rebuffed and applicants pay for those mistakes by having to re-file. Applications with mistakes filed by customers are not refundable.
When you submit your TM Headstart request you will be contacted by one of our examiners within five working days with your application assessment results.
- Apply to register the client’s trademark online using eSERVICES. However once the application has been submitted and its information has been published the details of the application cannot be substantially changed, nor can classes of goods and services be added. Some minor changes may be made during the examination process. Thus, before you make the application it’s a good idea to make sure you have an accurate view of what classes of goods and/or services the trademark should be registered for.
- Submit a paper application via the post. Practitioners should note that a higher fee structure applies for postal applications.
IP Australia sets out the applicable fees. GST does not apply to any of the statutory fees associated with trademark applications.
All applications will be examined by IP Australia to ensure they comply with the Trade Marks Act 1995. Pursuant to section 31 of the Act:
The Registrar must, in accordance with the regulations, examine and report on:
(a) whether the application has been made in accordance with this Act; and
(b) whether there are grounds under the Act for rejecting it.
Statistically, most applications are accepted at this stage. However, if the trademarks examiner considers the application is not registrable then an adverse examination report is sent to the client. This usually occurs within three to four months of the application being filed and its cost is covered under the initial fees. The client will have 15 months from the date of the report to respond to that objection and have the examiner consider the response or the application will lapse. You may, as of right, request two three month extensions to this time period. A fee applies.
The Act sets out possible grounds for rejection in Division 2 sections 39 – 44. Possible objections may be based on the lack of distinctiveness of the trademark or similarities between the client’s trademark and earlier registrations or applications. It may be necessary to submit evidence through online service of the client’s earlier use of the trademark in the approved form, a declaration, to overcome the examiner’s objections. It may also be necessary to amend the client’s application slightly. The examiners at IP Australia are very helpful and it is worth a phone call to them upon receipt of objections to clarify how they may be overcome.
Where the matter is urgent, for example given imminent court proceedings, or where the client has already expended significant funds in the market place on say signage or advertising, the client may also lodge a Request for Expedited Examination of a Trade Mark Application at the same time as lodging the application through online services or by post. No fees apply for this. Note that the application must be accompanied by a witnessed declaration detailing the reasons for the request.
Once the examiner’s objections have been overcome, or in the absence of any objections, the application will be published in the Australian Official Journal of Trade Marks as ‘accepted’.
For two months after publication, the application may be opposed.
If there is no opposition the client’s trademark, on payment of the registration fee, the mark will be registered.
Whilst the client has six months from the date of publication of the application to pay the fee, delaying payment will provide an opportunity for another person to file an opposition. An application can be opposed at any time up until the registration certificate is issued.
For this reason, the precedent Letter to Client in Anticipation No Objection, which requests payment of the fee into trust, is included in the Legal Practice Guide.
Opposition Few trademark applications are opposed. The usual reason for opposition is a claim by the owner of another trademark that the application is identical or similar to theirs. If anyone does oppose the application they are required to notify the applicant and provide the grounds of their opposition.
IP Australia will also make contact advising of the process of dealing with the opposition.
Section 52 of the Act provides that a person may oppose the registration by filing a notice of opposition.
The notice of opposition must be filed:
(a) in the manner and form prescribed by the regulations; and
(b) within the prescribed period, or within that period as extended in accordance with the regulations.
The registration of a trademark may only be opposed on any of the grounds specified in the Act.
Filing a notice of opposition
As stated above, registration of a trademark or extension of protection of an International Trade Mark Designating Australia (IRDA) may be opposed by filing a notice of opposition.
A valid notice of opposition is comprised of a notice of intention to oppose and a statement of grounds and particulars see: regs 5.2, 5.5, 17A.29 and 17A.32.
Notice of intention to oppose and statement of grounds and particulars
The notice of intention to oppose sets out the name and address of the opponent and details of the application or action being opposed.
The statement of grounds and particulars must refer to the grounds of opposition under the Act and set out the facts and circumstances forming the basis for the grounds.
If a statement of grounds and particulars is not filed after the notice of intention to oppose, the trademark will proceed unopposed to registration.
The registrar will assess the adequacy of the statement of grounds and particulars. If the statement is adequate, IP Australia will give a copy to the applicant. If the statement is inadequate the registrar will either reject the opposition to registration or require the opponent to provide a further statement.
Any person may oppose registration/protection of a trademark by filing a notice of intention to oppose within two months from the day on which acceptance of the trademark application was advertised in the Official Journal (regs 5.6(1), 17A.33(1)).
If the notice of intention to oppose was filed late and an application for an extension of time has not been received/granted (regs 5.9, 17A.34C), the notice of intention to oppose will be deemed not receivable. The parties will be informed of the reason why the notice is not receivable and the relevant fee will be refunded.
If the notice of intention to oppose is filed before the trademark application has been advertised as accepted, the notice will be deemed not receivable and the fee will be refunded. The second step following the filing of the Notice to Oppose is that the potential opponent must file a statement of grounds and particulars within one month of filing the notice of intention to oppose.
There is no fee to file a statement of grounds and particulars.
Cooling off period
A cooling-off period may be requested at any time after a statement of grounds and particulars has been filed, but before IP Australia has made a decision on the opposition or dismissed the opposition. This is usually requested to allow mediation to take place. The time to file a notice of intention to oppose a registered trademark or a statement of grounds and particulars may be extended if:
− there has been an error or omission by the potential opponent or their agent;
− the IP Office has made an error or omission; or
− there are circumstances beyond the control of the potential opponent.
An application for an extension of time can be made by filing the application for an extension of time to file a notice of intention to oppose or a statement of grounds and particulars form and paying the relevant fee.
Why Choose Aries?
If you have an idea that you believe can be beneficial and valuable to you in the future, wouldn’t it be for the best to get it trademarked before anyone else gets a similar idea? Even though there is protection for unregistered trademarks.
The procedure of applying for a trademark can be tedious and getting all the paperwork done can be frustrating. There’s quite a significant contrast in procedures depending on what you’re looking to get patented. Getting a product trademarked is totally different than patenting an idea or a newly invented technology.
With an expert by your side, you ensure that you’re taking the shortest possible route to get all the formalities done and done right! If you consider your idea/product to be really unique and valuable, hiring an expert trademark lawyer will turn out as an investment rather than an expense.