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Trademarks

8. Registration Process

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Last updated: 22 Sep 2015
    8. Registration Process
  • There are five stages to registering your trade mark:
  • filing;
  • examination;
  • acceptance;
  • opposition; and
  • registration.
  • The trade mark application receives an application number and a filing date.
  • The filing date is very important. It is also known as the priority date.
  • The date can affect you in relation to third party applications and use.
  • The date will also be relevant if you are considering filing in other countries and claiming protection backdated to the Australian filing date.
  • After it is filed the Trade Marks Office will examine your application.
  • In Australia applications are examined within 4 months from the filing of the application.
  • It is possible to request accelerated examination if the examination or registration of a trade mark is urgent such as where there is an:
  • infringement issue;
  • a need to commit to an expensive marketing plan; or
  • if you wish to protect the mark overseas.
  • If examination is expedited the examination period may then be reduced to approximately 4-6 weeks.
  • If the Trade Marks Office raises an objection it will issue a formal examination report.
  • An applicant is required to place a revised application within 15 months from the date of the examiner’s first report in order for it to be accepted.
  • Extensions of time may be requested along with payment of the appropriate fee.
  • Failure to respond to the examiner’s report or to request an extension of time may result in the application lapsing.
  • If there is no adverse examination report or once an examiner's objections have been overcome the application is accepted and advertised in the Trade Marks Office Journal.
  • Any person having reasonable grounds may oppose the registration of a trade mark within two months of the advertisement.
  • A trade mark application may be opposed on a number of grounds as set out in the Trade Marks Act. These grounds are that the trade mark:
  • is a prohibited sign;
  • is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered;
  • contains or consists of scandalous matter or its use would be contrary to law;
  • is likely to deceive or cause confusion;
  • is substantially identical with or deceptively similar to a trade mark registered by another person in respect of similar goods or closely related services;
  • the applicant is not the owner of the trade mark;
  • the applicant is not intending to use the trade mark;
  • the trade mark is similar to trade marks that have already acquired substantial reputation in Australia;
  • the trade mark contains or consists of a false geographical indication; or
  • the application was made in bad faith.
  • The opponent bears the onus of establishing at least one ground for the opposition to be successful.
    • The process includes the opponent pleading (submitting in writing) its grounds for opposition and both parties filing evidence in support of their claims. The parties then have an opportunity to be heard.
  • If no opposition is filed or any opposition filed is unsuccessful the trade mark will be registered.
  • A certificate of registration will not be issued until an application is more than six months old. This is designed to avoid conflicts with priority claims asserted by incoming trade mark applications based on an overseas trade mark application filed under an International Convention.
  • Proceedings for infringement cannot be threatened or initiated until the mark has been officially registered.

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