Australia follows
the International Classification system. Goods and services are grouped into classes. There are 34 classes for goods and 11 classes for services.
When filing an application the goods and/or services for which registration is desired must be specificed and grouped by class.
An application may specify goods and/or services that fall in multiple classes.
The application and
registration costs depend on the number of classes specified.
An Australian trade
mark application is automatically examined by the Trade Marks Office about 3 to
5 months after filing the application.
The Trade Marks
Office will search existing registrations and applications which have an
earlier priority date for the same or similar marks in respect of the same or
similar goods or services to those specified on the application. If the
examiner finds overlapping applications or registrations then an objection
shall be raised. These may be overcome by argument or by amending the goods or
services specified in the application, or both. The examiner will also consider
whether the mark is objectionable due to being directly descriptive,
geographical or otherwise objectionable. If such objections cannot be overcome
by argument then, if there has been use of the mark, they may be overcome by
demonstrating that the use of the mark has rendered the mark to be distinctive.
The applicant has
15 months from issue of the first report to obtain acceptance, otherwise the
application lapses. Up to 6 months of extensions may be obtained in advance
upon payment of fees. If acceptance cannot be obtained, rights may be
maintained by filing a divisional application for some of the goods or
services.
If no objections
are raised or any objections are overcome the application is accepted and
published as accepted in an official journal. Third parties have three months
from the date of publication of acceptance to oppose to the registration of the
mark. Opposition is relatively rare and if no opposition is filed, the
application proceeds to registration subject to payment of registration fees.
After acceptance
and expiry of the opposition period, the application will be registered once
registration fees are paid.
There is a fee for each class
in the application and must be paid within 6 months of the date of
publication of acceptance.
If the registration fees are not paid then the
application lapses.
A trade mark
is registered for 10 years from the filing date of the
application. The registration may be renewed indefinitely with renewal fees
being due every 10 years. If the renewal fees are not paid then the
registration ceases.
Renewal fees may be paid up to 6 months late but with
additional fees.
A trade mark
registration may be removed totally or partially if it has not been used on
goods or services specified in the registration for a continuous period of
three years ending one month before the filing of an application for removal.
An application may not be made until 5 years after the filing date
so effectively there is an initial period of 5 years.
If use ceases for more
than 3 years and then recommences, then a registration is no longer vulnerable
to removal for non use, so long as a non use action did not commence less than
one month before use recommenced.
Trade Marks