Trade Marks and rights of trade mark owners are governed by common law, as well as the Trade Marks Act 1995, and Trade Marks Regulations 1995.
Australian common law provides protection to trade marks based on actual use and reputation within the region, but it is less certain when compared to registration of a trade mark at IP Australia, the government agency which administers intellectual property rights.
The Trade Marks Act 1995 defines a trade mark as “sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person”, and also defines trade mark infringement, defences, and anything pertaining to trade marks. Nonetheless, the Trade Marks Act 1995 does not codify the law of trade marks in Australia.
Australia is also a signatory to the Paris Convention and the Madrid Protocol, as such, prospective trade mark applicants are able to utilise the priority claims or designate the Australia as part of their international registration.
1. Pre-Registration Requirement
There are no strict pre-registrations requirements imposed by Australian law before the commencement of a trade mark application, but there are specific eligibility rules to adhere to. Furthermore, it also has to be ensured that the prospective trade mark application does not conflict with another person and/or company’s trade mark. As such, a pre-filing assessment is highly recommended to ensure the registerability of any prospective trade mark application.
The whole process of registering a trade mark in Australia, for the application stage up-till the receiving the registration certificate, at a minimum, will take seven and a half months. In the event that there are objections raised by IP Australia, or third parties opposing the trade mark application, a further eighteen months or longer is added to the whole registration process.
3. Validity Of A Registered Trade Mark
A registered trade mark in Australia is valid for ten years from the date of the trade mark application. Thereafter, the registered trade mark is able to be renewed for subsequent ten year periods, through an application for renewal together with the payment of the IP Australia official fee.
Notwithstanding the validity of a trade mark in Australia, a third party can apply to remove your registered trade mark from the Register if it has not been used for three years, or if you had no intention of using it at the time of the trade mark application.