Introduction

Trademarks are protected in Australia by the Trade Marks Act and by the Common law doctrine of passing off.

The protection by passing off alone is the last resort. Enforcement by way of passing off entails copious proof of establishment of goodwill. Unregistered mark also leaves the trademark register wide open for third party to register an identical or similar mark to it.

Foreign company or individual can apply to register their marks in Australia without nationality restriction or residency requirement.

Trademark application in Australia operates on a first-file-first-get basis, and can be based on an intent to use basis. No proof of use is required for the issuance of the trademark certificate.


 

Fees

Our fee is HK$10,600 per mark per class from application to forwarding of certificate. The fee is inclusive of both the official filing fee, official registration fee and our professional fee. In the event of the application not approved for publication, half the fee will be refunded.

Unless the application encounters objection or opposition, there will not be any extra-charge. The chance of objection or opposition can be reduced by (a) choosing an invented word as the mark, or adding a distinctive logo to the mark, and (b) having a search conducted before application to find out whether the mark is identical or similar to any existing registered mark or prior application.

In the event of any objection by the examiner, the client has the choice of (1) continue to pursue for registration at additional fees according to the complication, or (2) abandon the pending application for refund of half the fee. In the event of any opposition by third party, apart from our additional fees, the applicant or the opponent who loses or abandons will be liable to pay the legal fees of the other side.

 

Search

Prior to filing, the chance of success can assessed by having a search at the fee of HK$2,200 per mark per class. The search is inclusive of both identical and similarity search. Pre-application search report is available within 1 week of instruction.

Search is optional at the choice of the client. If the client’s mark consists of simple logo or common words found in dictionary, search is usually recommended. On the other hand, if the client’s mark is an invented word, or a complex logo, then the client may take a chance to file the application without search.

 

Timeframe

The application for trademark registration in Australia generally takes between 8 to 15 months to complete :-

Filing receipt and filing number	1 month
Application searchable in official website	1 month
First examination report	4 - 8 months
Opposition period after publication	3 months
Issuance of trademark certificate	3 months

Upon registration, a registered trademark is first valid for 10 years and is renewable indefinitely for further periods of 10 years each by paying the renewal fee.

For details on renewing registered trademark, please refer to Australia Trademark Renewal .

Australia trademark certificate sample :

 

Classification of Goods

Australia adopts the Nice Classification of Goods and Services. Multiple classes or product categories of the same mark can be included in one application. Specification (ie. description of goods and services) can either base on actual use or an honest intention to use the mark in Australia.

All types of goods and services on which the mark is currently used or honestly intended to be used should be listed as broadly as possible in the specification to cover the class or product category applying for in one exercise, since the specification can only be narrowed and not extended after filing.

Upon registration, the scope of the exclusive right granted by the registration is limited by the ambit of the specified goods and services.

 

Convention Priority

If the client has filed an application in another WTO or Paris Convention country within the last half year, then there is a choice of treating the effective filing date in Australia to be the same as the date of the earlier application.

Priority claim is usually made when the Australia application is part of a coordinated world-wide filing exercise, or when a search reveals that a recent application of a third party may be surpassed by the priority claim, or if the client is concerned about possible competing third party application in Australia at around the same time.

 

Details Required

1.	Full name, address and nationality of the trademark applicant.
2.	Selection of goods items and/or services items to form the specification.
3.	Logo or stylized mark in .jpg format.

 

 

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