Protection of Trademarks in Australia

A trademark may be the most effective and valuable marketing tool of an overseas company doing business in Australia. Consumers identify certain quality and image with goods and services bearing a trademark. Therefore, overseas companies with any likelihood of doing business in Australia who own valuable trademarks should consider registering that trademark under the Australian Trade Marks Act 1995 (the "Trade Marks Act"). There have been cases in Australia where foreign trademarks have been copied in Australia by Australian entities and registered in Australia under the Trade Marks Act. The use of the foreign trademark in Australia by the overseas owner could actually constitute an infringement of this registration. Such a situation can be prevented by registration of a foreign mark used in Australia.

A trademark is defined under Section 17 of the Trade Marks Act as a sign used or intended to be used to distinguish goods or services dealt with or provided in the course of trade. Section 6 of the Trade Marks Act defines "sign" as including any letter, number, word, phrase, sound, colour, smell, shape, logo, picture, aspect of packaging, a combination of these.

In Australia it is possible to register standard trademarks, which are the vast majority of trademarks registered in Australia, special purpose trademarks, collective trademarks, certification trademarks and defensive trademarks.

To be registrable, a mark must be used or intended for use in the course of trade, if it is to function as a trademark within the meaning of the Trade Marks Act. This means that it must be used in the course of a commercial transaction, most usually the offering for sale of goods or services.

The registered owner of a trademark in Australia is entitled to:

1. the exclusive right to use the registered trademark for the goods or services specified in the registration;

2. the exclusive right to authorise other people to use the registered trademark for the goods or services specified in the registration;

3. sell the a registered trademark;

4. trademark protection in the whole of the Commonwealth of Australia;

5. give the Australia Customs Service a notice objecting to the importation of goods and infringing the registered trademark; and

6. prevent others from using the trademark without the owner's approval.

Not all trademarks are registrable. A trademark is not registrable if it is not capable of distinguishing the applicant's goods or services from others in the marketplace. It is difficult to register a trademark that describes some aspect of the goods or services, conflicts with an earlier trademark, or would mislead the public about the nature of the goods or services. Trademarks that (i) denote the kind, quality or intended purpose of the goods or services; or (ii) that are common surnames or geographical names, are usually not capable of distinguishing the applicant's goods or services.

Trademarks which conflict with an earlier trademark, or would mislead the public about the nature of the goods or services are also difficult to register.

Some words are protected by law and therefore prohibited as trademarks. For instance, "OLYMPIC CHAMPION" is prohibited under the Trademarks Act 1995 and "CHAMPAGNE" is prohibited for Class 33 goods under the provision of the Australian Wine and Brandy Corporation Act 1980."

Australia is a member of the Paris Convention for the Protection of Intellectual Property and, as a result, it extends special protection to those obtaining trademark registration in other member States. Thus, where a successful application for registration is made within six months after a similar application in a Convention country, the date of registration for the trademark registered in Australia is deemed to be the date of overseas application.

The following is an outline and explanation of the procedures involved in the registration of a trademark in Australia.

Before filing an application to register a trademark, it is vital to search all trademark records. The existence of similar trademarks could block an application for registration.

Applications are examined in order of filing. At present, applications are being examined approximately two months after their filing. It is possible to request an expedited examination upon the payment of a fee. The application must be accompanied by a declaration setting out reasons why the applicant would be seriously disadvantaged by the above timeframe. Not all requests for expedited examination are granted.

Trademarks can only be registered within certain classes of goods or services. It is therefore necessary to identify the appropriate classes. Further, one must specify the class and then list the goods on which one intends to use the trade mark eg. Class No. 25 Clothing, headgear. A description "all goods" or "all services" in the class, or including "all other goods" or "all other services" is not acceptable. The trademark can only be registered for the class or classes of goods or services in relation to which the applicant proposes to use the trademark.

If the application is found to meet all the requirements of the Act, it will immediately be accepted for registration.

The details of the application will then be advertised in the official Journal of Trade Marks. For three months after the advertisement date, anyone who believes that the applicant's trademarks should not be registered may oppose its registration.

If no opposition is filed against the application, the trademark will be registered upon payment of the registration fee. The trademark will be registered from the date on which the application was filed and not from the date it was examined or accepted. The initial period of registration of the trademarks is for 10 years from the filing date.

Trademark applications are currently being examined approximately three months after they are filed. The earliest date which a trademark can be registered is seven and half months after the application is filed. This is to allow Australia to fulfil its international obligations to allow six months for applicants to claim that the priority date based on an overseas filing. Therefore, the time taken for an application if it all proceeds smoothly is approximately eight or nine months. In certain cases, the application can be expedited; however, where the application is disputed or rejected, the process will take much longer with additional costs incurred.

If the application is not accepted, the Trade Marks Office will send out a report setting out all the requirements which need to be addressed. The Act allows for 15 months from the date of the examiner's first report in which to meet any requirements identified by the examiner and to have the application accepted by the Registrar. There are some allowances for extension of time upon the payment of certain fees, however, if the trademark application is not accepted and it runs out of time, it will lapse.

At the end of each period of ten years trademarks must be renewed otherwise they will lapse. Additional fees apply for the renewal of a trademark.

Overseas companies which carry on business in Australia are generally required to register their company name under the Federal Corporations Law. However, where they carry on their business under a different name, such as a trademark, the different name may need to be registered under State legislation.

Business Names legislation in each State in the Australian Federation requires registration of a name where business is carried on under that name in the State. In most States, "carrying on business" is defined to include establishing a place of business and soliciting or procuring any order from a person in the State. Therefore, in most States, the mere soliciting or procuring of orders will not, of itself, constitute the carrying on of a business. It should be noted that, in South Australia, a business will be deemed to be carried on in that State if an advertisement gives an address in that State to which communications in connection with their business may be addressed.

The definition of "carrying on business" under State business names legislation is broader than the definition of "carrying on business" under the Corporations Law. Accordingly, some overseas companies (such as those which merely open a representative office in Australia), may be required to register a business name, even where they are not required to become registered their company name under the Corporations Law.

The registration of a business name is a straightforward procedure involving payment of a nominal fee. The principal object of the registration of business names legislation is to protect the public by providing a public register where particulars of persons carrying on business can be registered and made available for inspection. Unlike trademark registration, registration of a business name does not operate to protect or confer any proprietary interest in a name.

The registration of the business name should be timed in conjunction with the commencement of business in the State. A business name cannot be registered more than two months before it is proposed to carry on business. At the end of each period of three years business names must be renewed otherwise they will expire and become available for registration by others.