Trademarks |
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Australia |
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| (Asia Pacific) Firm Clayton Utz Updated 22 Mar 2021 | |
| What is the system for trademark protection in your country? | The system for trademark protection in Australia includes the following:
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| To which international treaties does your country belong? | Australia belongs to the following international treaties:
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| What are the benefits of registering a trademark in your country? | The benefits of registering a trademark in Australia include:
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| Is it possible to obtain registration for the following types of marks under the registration system in your country? | Service marks Yes Defensive marks Yes, the trademark must already be registered in the name of the applicant; the trademark must have been used to such an extent, in relation to its registered goods or services, that its use on the goods or services for which defensive registration is sought would be likely to be taken by consumers as indicating a connection with the owner of the registered trademark. Collective marksYes, collective trademarks can only be owned by an association. Collective trademarks must meet requirements that are the same as those for standard marks, including formalities and substantive requirements. Certification marks Yes, certification trademarks must meet requirements that are the same as for standard marks, including formalities and substantive requirements (registrability, and lack of confusing similarity with prior conflicting trademarks). Rules governing the use of the certification mark must be approved by the Australian Competition and Consumer Commission, who reviews the rules to see if they are in the public interest, particularly that any anticompetitive effect is outweighed by the public benefit and to ensure that the certification scheme is not likely to be misleading or deceptive. It is possible to have an unregistered certification scheme via licensing arrangements but care needs to be exercised that it would not be anticompetitive or would mislead or deceive. Well-known marks Yes, well-known marks may be registered as a standard trademark if they meet the prescribed criteria. In addition, well-known marks may be registered as defensive trademarks. Also, a standard registered trademark can be infringed if used on goods unrelated to its registered goods/services if the registered mark is 'well-known in Australia. The common law tort of passing off may also be applicable, as might be section 18 of the Australian Consumer Law which prohibits misleading or deceptive conduct in trade or commerce or conduct likely to mislead or deceive. Series marks Yes, in order for a series application to be valid, the trademarks must resemble each other in material particulars (that is, the main identifying feature must be the same) and also only differ in the following ways: statements or representations as to the goods or services being claimed; statements or representations as to the number, price, quality or names of places; or the color of any part of the trademark. Marks in a different language or characters other than Roman characters Yes, the same criteria for registration apply to trademarks consisting of non-English words or that are in the non-Latin script as apply to English or Latin script words where relative or absolute grounds are under consideration. Translation and transliteration endorsement is required. Non-traditional marks: Sound marks Yes, an application for a sound as a trademark must include a graphical representation of the mark. This may be a simple verbal description of the sounds. Musical notation is acceptable as a graphical representation of a sound mark consisting of a musical piece. The applicant must supply a clear and concise description of the trademark which will be entered as an endorsement to the application. The applicant must supply recordings of the trademark on a medium that allows for easy replaying. The description and the recorded representation of the trademark should together clearly define all the details which constitute the trademark. Non-traditional marks: Smell marks Yes, an application for a scent mark must include a graphical representation of the scent mark. This could be a verbal description of the scent of a gas chromatograph. The graphical representation must be in a form that conveys information to the ordinary person allowing them to identify the trademark. The applicant must include a precise and accurate description of the scent that will be entered as an endorsement of the application. The description must include both what the scent is, and how it is to be used in respect of the goods or services claimed. Non-traditional marks: Position marks Yes, an application for a movement of position mark must include clear representations that show all the features of the trademark. The application must be accompanied by a description of the trademark that likewise clearly describes all the features of the trademark. A copy of the actual trademark must also be provided. The description for either a movement trademark or a hologram must be precise. Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color) Yes, An application for a color or colors as a trademark must include a clear and concise description of the trademark in an endorsement on the application. A pictorial representation showing the color claimed and the manner in which it is to be applied to the goods or packaging should be supplied. Single color marks are the most difficult to register and must proceed by way of evidence of acquired distinctiveness. Color combinations are more easily registered. The more colors in the combination, the easier it will be to satisfy distinctiveness requirements. Non-traditional marks: Shape or three-dimensional marks Yes, an application for registration of a shape as a trademark must include descriptions and representations that show all features of the trademark sufficiently clearly to permit proper examination of the trademark. |
| What are the documents and information required for filing a trademark application in your country? | Documents and information required to file a trademark application in Australia include:
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| Are multi-class applications permitted in your country? | Yes, multi-class applications are permitted in Australia. There is no limit to the number of classes. |
| Is there substantive examination of trademarks? | Yes, there are substantive examinations of trademarks in Australia on the following grounds:
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| What are the absolute grounds for refusal? | Absolute grounds for refusal of a trademark in Kenya include:
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| What are the relative grounds for refusal? | Relative grounds for refusal of a trademark in Australia include:
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| What is the time period from application to registration for a straightforward trademark application in your country? | The time period from application to registration in Australia is between 6-12 months. |
| Is late renewal of a trademark registration permissible in your country? | Yes, late renewal of trademark registration is permissible in Australia. Late renewal must be effected within six months for the renewal deadline. Late fees are payable for each month beyond the renewal deadline. |
| Does evidence of use need to be submitted to the trademark office at any time in order to maintain an application for registration or a registration of a trademark in your country? | Yes, evidence of use needs to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in Australia. Evidence of use is not required for renewal, evidence of use is only required if the registration is challenged for non-use, in which case it will be removed if use cannot be demonstrated or if the limited grounds for an excuse not made out or if for some reason the Registrar exercises the discretion not to remove the registration based on extenuating circumstances. |
| Are trademark licensees required to record themselves with the Registrar? | No, trademark licensees are not required to record themselves with the Registrar in Australia. |
| What are the available enforcement methods in your country? | Available enforcement methods in Australia include:
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| Are there any peculiarities not mentioned above in the system of protection for trademarks in your country of which it is important for clients to be aware? | In Australia, if a registered mark remains unused for a period of three years, it is prima facie liable to removal for non-use at the suit of another person. Resumed use will cure any period of non-use. |
Trademarks
The system for trademark protection in Australia includes the following:
- Registration
- Common law: Common law rights arise through use and exist alongside registered rights. The common law tort of passing off requires three things: reputation, misrepresentation and damage or likely damage. Section 18 of the Australian Consumer Law ("ACL") prohibits any person from engaging in misleading or deceptive conduct in trade or commerce and gives a separate statutory right of action.
- Coexisting rights under registration and common law
Australia belongs to the following international treaties:
- Paris Convention
- Madrid Protocol
- Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
- Trademark Law Treaty ("TLT")
- Singapore Treaty on the Law of Trademarks
The benefits of registering a trademark in Australia include:
- It entitles the proprietor to bring an infringement action
- Other: A registered trademark can be bought, sold, mortgaged and licensed independently of the goodwill in the underlying business; a registered mark is on the public record and third parties maybe be deterred from adopting it; having a registered trademark can be a complete defense to any claim of statutory trademark infringement brought by another registered trademark owner; registered marks are needed to take advantage of customs seizure provisions; there are certain criminal sanctions for misuse of registered trademarks.
Service marks
Yes
Defensive marks
Yes, the trademark must already be registered in the name of the applicant; the trademark must have been used to such an extent, in relation to its registered goods or services, that its use on the goods or services for which defensive registration is sought would be likely to be taken by consumers as indicating a connection with the owner of the registered trademark.
Collective marksYes, collective trademarks can only be owned by an association. Collective trademarks must meet requirements that are the same as those for standard marks, including formalities and substantive requirements.
Certification marks
Yes, certification trademarks must meet requirements that are the same as for standard marks, including formalities and substantive requirements (registrability, and lack of confusing similarity with prior conflicting trademarks). Rules governing the use of the certification mark must be approved by the Australian Competition and Consumer Commission, who reviews the rules to see if they are in the public interest, particularly that any anticompetitive effect is outweighed by the public benefit and to ensure that the certification scheme is not likely to be misleading or deceptive. It is possible to have an unregistered certification scheme via licensing arrangements but care needs to be exercised that it would not be anticompetitive or would mislead or deceive.
Well-known marks
Yes, well-known marks may be registered as a standard trademark if they meet the prescribed criteria. In addition, well-known marks may be registered as defensive trademarks. Also, a standard registered trademark can be infringed if used on goods unrelated to its registered goods/services if the registered mark is 'well-known in Australia. The common law tort of passing off may also be applicable, as might be section 18 of the Australian Consumer Law which prohibits misleading or deceptive conduct in trade or commerce or conduct likely to mislead or deceive.
Series marks
Yes, in order for a series application to be valid, the trademarks must resemble each other in material particulars (that is, the main identifying feature must be the same) and also only differ in the following ways: statements or representations as to the goods or services being claimed; statements or representations as to the number, price, quality or names of places; or the color of any part of the trademark.
Marks in a different language or characters other than Roman characters
Yes, the same criteria for registration apply to trademarks consisting of non-English words or that are in the non-Latin script as apply to English or Latin script words where relative or absolute grounds are under consideration. Translation and transliteration endorsement is required.
Non-traditional marks: Sound marks
Yes, an application for a sound as a trademark must include a graphical representation of the mark. This may be a simple verbal description of the sounds. Musical notation is acceptable as a graphical representation of a sound mark consisting of a musical piece. The applicant must supply a clear and concise description of the trademark which will be entered as an endorsement to the application. The applicant must supply recordings of the trademark on a medium that allows for easy replaying. The description and the recorded representation of the trademark should together clearly define all the details which constitute the trademark.
Non-traditional marks: Smell marks
Yes, an application for a scent mark must include a graphical representation of the scent mark. This could be a verbal description of the scent of a gas chromatograph. The graphical representation must be in a form that conveys information to the ordinary person allowing them to identify the trademark. The applicant must include a precise and accurate description of the scent that will be entered as an endorsement of the application. The description must include both what the scent is, and how it is to be used in respect of the goods or services claimed.
Non-traditional marks: Position marks
Yes, an application for a movement of position mark must include clear representations that show all the features of the trademark. The application must be accompanied by a description of the trademark that likewise clearly describes all the features of the trademark. A copy of the actual trademark must also be provided. The description for either a movement trademark or a hologram must be precise.
Non-traditional marks: Color marks (i.e. registration of a single color or a combination of colors, e.g. Cadbury's purple color)
Yes, An application for a color or colors as a trademark must include a clear and concise description of the trademark in an endorsement on the application. A pictorial representation showing the color claimed and the manner in which it is to be applied to the goods or packaging should be supplied. Single color marks are the most difficult to register and must proceed by way of evidence of acquired distinctiveness. Color combinations are more easily registered. The more colors in the combination, the easier it will be to satisfy distinctiveness requirements.
Non-traditional marks: Shape or three-dimensional marks
Yes, an application for registration of a shape as a trademark must include descriptions and representations that show all features of the trademark sufficiently clearly to permit proper examination of the trademark.
Documents and information required to file a trademark application in Australia include:
- Name and address of the applicant
- Representation of the trademark
- Goods and services and the class(es) for which the trademark is to be registered
- Others
- Details of the foreign mark from which convention priority is claimed. A copy of the foreign application/registration is not required.
Yes, multi-class applications are permitted in Australia. There is no limit to the number of classes.
Yes, there are substantive examinations of trademarks in Australia on the following grounds:
- Substantive grounds
- Relative grounds
- Both
Absolute grounds for refusal of a trademark in Kenya include:
- Mark has direct reference to the character or quality of the goods or services
- Mark is not distinctive
- Mark consists of a geographical name
- Mark consists of a surname
- Other: Some letters, numerals, shapes, and geographical names will be regarded as non-distinctive.
Relative grounds for refusal of a trademark in Australia include:
- There is a prior application for registration or registration for an identical or confusingly similar mark in relation to the same goods or services as the subject mark
- There is a prior application for registration or registration for an identical or confusingly similar mark in relation to similar goods or services (although in a different class) as the subject mark
The time period from application to registration in Australia is between 6-12 months.
Yes, late renewal of trademark registration is permissible in Australia. Late renewal must be effected within six months for the renewal deadline. Late fees are payable for each month beyond the renewal deadline.
Yes, evidence of use needs to be submitted to the trademark office in order to maintain an application for registration or registration of a trademark in Australia. Evidence of use is not required for renewal, evidence of use is only required if the registration is challenged for non-use, in which case it will be removed if use cannot be demonstrated or if the limited grounds for an excuse not made out or if for some reason the Registrar exercises the discretion not to remove the registration based on extenuating circumstances.
No, trademark licensees are not required to record themselves with the Registrar in Australia.
Available enforcement methods in Australia include:
- Civil enforcement
- Infringement action
- Passing off
- Border or other administrative enforcement measures
In Australia, if a registered mark remains unused for a period of three years, it is prima facie liable to removal for non-use at the suit of another person. Resumed use will cure any period of non-use.