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Trade Marks Frequently
Asked Questions
Frequently Asked Questions
A B C D
E F G H I J K L M N O
P Q R S T
U V W X Y Z
Amending a trade mark-pre-publication
Amending a name or an assignment-pre-publication
Amending goods and services-pre-publication
Applying for trade mark registration
online
Assignment, transmission or sale of
trade mark
Capable of distinguishing-what
does this mean?
Claimed interest in a trade mark
Collective trade marks
Colour
Common law rights
Conflicting trade marks (citations)
Copyright
Deferment of acceptance
Divisional applications
Extension of time
Goods and Services pick-list
Warning: Globus
and other non-official registers
Multi-class applications
Olympic trade marks
Refund or remission of fees
Registration of a trade mark
Representation of trade mark and scanning
Revocation of acceptance
Series applications
Trusts
Unusual trade marks
Use of letters ® and ™
Withdrawal of trade mark
Amending a trade mark
Q. I have already filed my application but I want
to make changes to the trade mark. Can I do this now?
This answer depends on whether details of the application
have been published, i.e. entered in trade marks database.
Prior to publication: Substantial amendments can be made, but only if
the Trade Marks Office is contacted in time. Currently details are published
within approximately 1-3 days of filing.
Post Publication: If the details of your application are already published,
you cannot make any changes which will affect the identity of your trade mark
as originally filed. Only very minor changes can be made.
Q. What steps are involved in amending my trade mark?
You can make a written request to amend your trade
mark, which must include details of the trade mark number, the nature of the
amendment and the proposed new trade mark. Any request for an amendment to a
trade mark is examined by a trade mark examiner.
Q. Why can't I amend my trade mark after filing?
Details of new applications are published within
approximately 3 days. It is not possible to amend your trade mark after publication
as it would disadvantage those applicants who are filing after and who may be
unaware of any changes at the time they do a search for their trade mark
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Amending a name or an assignment
Q. My application is in
the name of ABC Pty Ltd. Can I amend the name to 123 Pty Ltd?
If the ACN numbers are different, this will be an
assignment and an amendment cannot be made. You may apply for an assignment
by filing the form and proof of title.
Q. Can I amend the ACN on my application?
No. A change in the ACN means a change in legal ownership
and will therefore constitute an assignment.
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Amending goods and services
Q. Can I add extra classes
or additional goods/services to my application?
It is not possible to add additional goods or services
to an application as this will extend the scope of the original application.
If extra goods or services need to be added, a new application will have to
be filed accompanied by the appropriate fee.
If there has been an error in the classification of the application, a new
class may need to be added to correct this error. This must not however extend
the scope of the original application.
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Applying for trade mark registration
online
Q. Can I file all of my
trade mark applications using this facility?
The form has been designed to deal with the majority
of applications and is structured to gather information for a basic trade mark
application. Where application details are more complex, the form will dynamically
change to meet the demands of the specific application.
Q. How will I know that
you have received the application details correctly?
When you submit the form to the Office, you are given
a numerical pre-filing number to enable you to identify your application to
us if you need to make an enquiry. After receiving the form we record your details
on our database, process the fee payment and allocate a trade mark number. You
will then be sent a Notice of Filing by normal post which will advise the trade
mark application number, provide you with a copy of the details of your application
that are recorded on our database and briefly explain the examination process
which all applications must undergo before being accepted for registration.
Q. Will my application
be processed faster because I have filed it electronically?
No. The Trade Marks Act requires that applications
are examined in the order in which they are received. Electronic filing will
simply be a more convenient alternative to the existing paper application form
for those applicants with Internet access.
Q. If I have difficulty
completing the form, who should I contact?
If you have difficulties completing the form, for
example "I am not sure what class my services fall in?", or "The
form is telling me that my trade mark image is not in the correct format",
please seek assistance from the Customer Support Centre on 1300 651 010.
Assignment, transmission or sale
of trade marks
Q. When is the applicant
notified that an assignment has been carried out?
A standard letter is sent to the applicant's address
for service when the assignment has been approved.
Q. Can you assign pending applications?
Yes.
Q. How are records for partial assignments created?
A new trade mark number is created. The history of
both the original and the new trade mark numbers are the same and upon recordal
of the assignment, the goods or services of one are amended to reflect the relevant
goods and services. The new application/registration is only for the assigned
goods and services.
Q. Who is the assignee? Is it the new owner or the
old owner?
The assignee is the new owner. The assignor is the
old owner.
Q. Liquidators. If there are no owners except the
liquidators, can the liquidators assign the trade marks?
Liquidators have the power to transfer or assign
the trade mark to anyone on behalf of the owners. Normal application forms apply.
They should also note they are the liquidators on the form.
Q. What type of transfer documents do I need to file?
The assignment application form should be accompanied
by documentary evidence showing proof of title, such as deed of assignment,
merger document, simple letter of assignment, probate document in the case of
a deceased owner, or a declaration.
Q. Do assignment documents need to be original?
Either the original or a certified copy is needed.
Q. What is a 'certified copy' of an assignment document?
This is a copy which has been certified as being
a true copy, eg. 'I hereby certify that this is a true copy'. Certification
must be signed, dated and have the name of the certifier near the signature.
Q. Does the recording of a claimed interest or right
remain on the register even when the trade mark is sold and the assignment recorded?
Yes, unless the recording of the claim is cancelled.
The claimed interest or right is, however, notified of any assignment application
filed.
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Capable of distinguishing-what does this mean?
Q. What is meant by 'capable
of distinguishing'?
Under the Trade Marks Act, if a trade mark
is not capable of distinguishing the goods or services of the applicant, the
trade mark must be rejected.
Examiners rely on court cases and legal precedent in deciding whether a trade
mark is capable of distinguishing, however one of the main criteria which is
considered is whether other traders are likely, in the ordinary course of their
business and without improper motive, to need to use the same or similar trade
mark in relation to their own goods or services. Traders should not be granted
a monopoly in words, expression or logos which other traders may legitimately
need to use to describe their own goods or services.
Q. What types of trade marks would be difficult
to register?
Those trade marks which indicate:
kind
This includes the name of the goods or services and any component which indicates
the size or type of goods or service, eg. sedan for cars.
quality
Laudatory words are commonly used by traders to extol the virtues of their
goods or services, eg. superior, good, best and number one.
quantity
Indications of quantity, including reference to numerals, are needed to indicate
volume, area, model or batch number, and would be unlikely to function as trade
marks, eg. 25's for cigarettes.
intended purpose
Words which describe the function of the goods or the result of a service are
not capable of distinguishing, eg. sticks to metal for glue; roach-free for
a pest control service.
value
Words which emphasise the worth, importance or value of a product or service,
eg. worth their weight in gold.
time of production
Trade marks which refer to a time frame when the goods were produced or when
the services are to be available, eg. ready in one hour for drycleaning services.
geographic origin
Although geographical names have the potential to be registrable, traders will
generally not be able to obtain a monopoly on the name of a place or region
with a reputation for the designated goods or services unless overwhelming evidence
of use is provided, eg. Hunter wines. It is worth noting that if the geographical
origin has no relationship to the goods at all (ie. North pole bananas) then
it may be registrable.
surnames
This depends on how common the surname is.
Please note: Although these types of trade marks may have grounds for
rejection raised against them in an examiner's first report, these may be overcome
through the provision of evidence of use or other special circumstances.
You may ring the examiner of the application for information on overcoming
problems in the application or alternatively you can consult a patent attorney
or legal practitioner on these matters.
Q. What happens if part of a trade mark is not capable
of distinguishing but the remainder of the trade mark is registrable?
Trade marks will be considered as a whole. The whole
trade mark must be capable of distinguishing the goods/services.
The overall registrability of the trade mark depends on the relative proportions
of the elements within the mark, i.e. the size of the registrable component
in relation to those element/s which are not capable of distinguishing. The
overall impact of the trade mark on the potential user will be considered by
the examiner.
Q. Can an applicant offer a disclaimer?
Yes they can but it will not affect the registrability
of the trade mark. If the trade mark is not capable of distinguishing the goods/service,
a disclaimer will not get it accepted. The trade mark as a whole is considered.
Q. If a trade mark is not capable of distinguishing,
does the application have any chance of getting registered?
It will probably mean that a ground for rejection
will be raised in the examiner's first report. However, there are several ways
of overcoming grounds for rejection through the provision of evidence of use
of the trade mark.
You can ring the examiner of the application for further information or alternatively
you can discuss these options and their probable costs with a legal adviser.
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Claimed interest
Q. Should I record my claimed interest in a trade mark with IP Australia?
Yes. The right of the registered owner to deal with the trade mark is limited
only by those claimed interests that have been recorded in the Register. If
you ever intend or need to act upon your claimed interest, you will need to
have had it recorded.
Q. Do I need to file
a copy of the agreement between the owner and the person claiming an interest?
No. However the basis on which the interest or right
is claimed must be specified in the application which must also be a joint application.
Q. Do you need to send in a copy of the mortgage
through which you wish to claim an interest?
No. Just complete the appropriate form.
Q. If there is a claimed interest on a registration
and a second claim of interest comes in, is the person who made the first claimed
interest notified of the second claimed interest?
No. We only deal with the individual claimant and
the owner.
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Collective trade marks
Q. What is a collective
trade mark?
A trade mark used or intended to be used in relation
to goods or services provided by members of an association, to distinguish those
goods or services from those provided by persons who are not members of an association.
Applications for collective trade marks will in the main be dealt with in the
same way as ordinary applications.
Q. Who can apply for a collective trade mark?
An association, whether incorporated or not, may apply for a collective trade
mark. The application must be made in the name of the association and not in
the name of an individual or individuals. Associations may choose to apply for
standard trade marks since collective trade marks can not be
assigned, transferred or sold.
Q. What is the difference between a body corporate
and an unincorporated body?
A body corporate is a legal identity separate from
the people who are members of the body corporate.
A body which is not a body corporate, does not have a separate legal identity
to its members. Its members must therefore carry any liability incurred by the
association both as an association and as individuals.
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Colour
I filed my trade mark in colour. Does filing a colour representation
limit my rights in my trade mark?
Not usually. Unless otherwise specified, trade marks are registered in respect
of all colours, whether or not you filed your trade mark in colour. Section
70 of the Trade Marks Act specifies:
- A trade mark may be registered with limitations as to colour.
- The limitations may be in respect of the whole, or a part, of the trade mark.
- To the extent that a trade mark is registered without limitations as to colour, it is taken to be registered for all colours.
You may file your trade mark application in black and white, or greyscale or colour. Unless for a particular reason your trade mark is limited to a particular colour or colours, your rights extend to all colours.
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Common law rights
Q. What benefit is there
in trade mark registration as opposed to common law protection?
If a trade mark is not registered and another
person uses it, the owner may have to take passing off action under the common
law to stop the infringement. They will have to prove that they have developed
a reputation in the trade mark and that use of the other trade mark would be
likely to confuse or deceive the public. This can be difficult and expensive.
If the trade mark is registered, a letter from a lawyer or patent attorney
may be all that is needed to deter the infringer.
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Conflicting trade marks (trade marks which are substantially
identical or deceptively similar)
Q. What does an examiner
consider when raising conflicting trade marks (citations) against an application?
Under Section 44 of the Trade Marks Act another
trade mark can be raised as a ground for rejecting an application if all of
the following apply:
- it is substantially identical or deceptively similar to the trade mark which
is the subject of an application; and
- it covers goods or services which are similar or closely related to those
covered by the application; and
- it has an earlier date than the application.
Q. How do you work out if the goods or services
are similar or closely related to those of another application?
Examiners rely on tests established through Court
cases to see if goods or services are of a similar description. Some of the
factors examiners consider are:
- what do the goods/services consist of?
- what is the origin of the goods/services?
- what is the purpose of the goods/services?
- are the goods usually made by one manufacturer?
- are the services usually provided by one and the same business or person?
- are the goods distributed by the same wholesale houses?
- are the goods/services provided from the same sources, during the same season,
in the same area or district and to the same customers?
- do the manufacturers, distributors or providers of the goods/services consider
they belong to the same trade?
Examples:
- 'metal blinds' and 'awnings' fall in different classes but are considered
to be similar goods;
- 'computers' and 'computer programming' are considered to be closely related
goods and services;
- 'business management consulting' and 'business training courses' fall in
different classes but are considered to be similar services.
It is important to note that Court cases have observed that no single factor
is conclusive in itself.
Q. How do you decide if a trade mark is substantially
identical or deceptively similar to another trade mark?
Court cases and precedent are used to guide examiners
on the tests for deceptive similarity and substantial identity. Some of the
things an examiner will consider are:
- a visual comparison of the trade marks. What are the differences and similarities?
- an aural comparison of the trade marks, i.e. how they would be pronounced
by consumers, sales persons etc. Will slurred or varied pronunciations cause
confusion of the 2 trade marks?
- the type of customer who would buy those goods (eg. adults, children, professional
people, qualified tradepersons). Does their level of knowledge enable them
to differentiate between the trade marks or will they be confused?
- the way the goods or services are offered for sale and how this will affect
the likelihood that the marks will be confused, eg. will they be sold side
by side on a supermarket shelf enabling closer comparison of the trade marks
or do you need a doctors prescription to buy the goods?
- the idea of the trade marks, i.e. the concept or idea that will stay in
the purchaser's mind. Is this idea similar?
Q. If there is a trade mark that is deceptively
similar or substantially identical to my trade mark, will my application be
rejected?
It will probably mean that a ground for rejection
will be raised in the examiner's first report. However, there are several ways
of overcoming grounds for rejection based on deceptive similarity or substantially
identical marks, including the submission of evidence of use.
It is advisable to discuss these options and their probable costs with a
legal adviser.
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Copyright
Q. What is the difference
between trade mark protection and copyright protection?
Trade Mark registration provides the owner
with legal rights to exclusive use, and/or control of the use of the trade mark
throughout Australia for the goods or services for which it is registered. A
trade mark has value as an asset so long as it used by the owner for the goods
or services registered.
An owner has the right to legally protect their trade mark and may sue for
infringement if another person uses their trade mark, or a similar trade mark,
on the same or similar goods or services. A letter from a lawyer or patent attorney
may be all that is needed to deter infringement.
Copyright automatically gives you rights to the protection of your original
works of art, literature, music, films, broadcasts and computer programs against
copying and certain other uses. It protects the original expression of ideas,
not the ideas themselves.
While making copies of copyright material can infringe exclusive rights, a
certain amount of copying is allowed under the fair dealing provisions of the
legislation. Copyright doesn't protect you against independent creation of a
similar work. Legal actions against infringement are complicated by the fact
that a number of different copyrights may exist in some works.
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Deferment of acceptance
Q. If an applicant files
a request for deferment on the final day of the 15 month period, how much time
do they have left when deferment is terminated?
None. The time left when deferment is terminated
is the time that remained of the 15 month period at the time deferment was granted.
An extension of time should be filed in plenty of time so that when deferment
is terminated, the application will not immediately lapse.
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Divisional applications
Q. If a multi-class application
is being held up by objections regarding one class only, is it possible to divide
out to allow progress of those classes where no objections apply?
Yes.
Q. If an application is beyond 21 months, can they
refile and claim a divisional?
Divisionals cannot amount to refiling of an application.
Some goods or services will have to be omitted from the specification when filing
a divisional for the same trade mark. The divisional application must be filed
before the parent application lapses.
Q. Can I file a partial divisional application,
i.e. a multi-class application where one of the classes is a divisional but
the other classes are not?
No. A divisional application can be filed for the
same trade mark for some of the goods and/or services covered by the parent
application. No new goods and/or services can be added.
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Extension of time (EOT)
Q. If an extension of
time is not granted, will the fees be refunded?
No.
Q. An application has lapsed and is over the 21
month period, can it be reinstated?
An application can be made under section 224 of
the Trade Marks Act. An extension of time fee of $100 for each month
must be paid.
Please note: the Trade Marks Office does not automatically grant applications
for extensions of time filed at this stage.
Q. For an EOT on an application which is beyond
the 21 month period (under section 224), does the request need to be accompanied
by a Declaration or can it be forwarded at a later date?
Regulation 21.25 states that the extension of time
application must be accompanied by a Declaration.
Q. What can an applicant do if their application
is beyond 21 months and their reasons for more time do not fall within
the grounds of section 224?
A divisional may be filed for the same trade mark
and most, but not all, of the goods covered in the application. The original
filing date is retained and the application has a further 15 months until acceptance.
The divisional application must be filed before the parent application lapses.
What is the official Goods and Services pick-list?
The official Goods and Services pick-list is an electronic tool designed to help you identify the classes of goods or services to which your trade mark applies. The pick-list is an optional component of the online filing facility. If you use the pick-list when making your application it will automatically classify your goods and services so that they are in the correct class at the time of filing your application. Your filing fees will be automatically calculated and there won't be any classification errors preventing acceptance of your trade mark application, though there may be other substantive issues raised. Using the Goods and Services pick-list also saves you money as a discount applies to applications filed using the pick-list facility.
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Warning: Globus and other non-official registers
Q. What are these registers?
The Trade Marks Office is continuing to receive
complaints from trade mark owners about unsolicited documents they are receiving
from companies which offer, for a fee, to register trade mark information for
the implied purpose of protecting trade mark rights. Some of these companies
identify themselves as:
- Institute of Commerce, Trade and Commerce based in Switzerland
- ZDR-Datenregister GmbH based in Frankfurt, (their letter is in German, English
and French)
- Globus Edition SL of Palma de Mallorca, Spain
- Company for Publications and Information Anstalt of Liechtenstein
- Company for Economic Publications Ltd, Vienna, Austria
- European Institute for Economy and Commerce - EIEC, based in Brussels
- IT & TAG of Switzerland
- Edition The Marks KFT
- INFOCOM, Schaan, Switzerland
- TM Collection, Hungary
These companies are not associated with IP Australia and have no official or government authority. The service they offer does not affect official trade mark registration or trade mark rights in Australia or, to the best of our knowledge, any other country.
Before paying a fee for any IP related service, please be sure to check the bona fides of the service provider to avoid being deceived.
Q. How do these companies access an applicants trade
mark details?
These companies are sending documents resembling
invoices to trade mark owners which offer 'entry' of trade mark details, presumably
in some sort of publication. They are usually sent after the trade mark details
have been advertised accepted in the Australian Official Journal of Trade
Marks.
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Multi-class applications
Q. Are the classes listed
in numerical order in a multi-class application?
Yes. See Regulation 4.4.
Q. Is there a limit to the number of classes in
a multi-class application?
No. An application can be filed in 45 classes if
desired.
Q. When can an applicant add classes to an application?
Classes can be added to an application if it is
requested in the course of examination in order to rectify a genuine classification
error. For example, if an applicant claims 'detergents for household use and
for medical purposes' in class 3, they have the option of extending the application
to include class 5 which covers 'detergents for medical purposes'. They must
pay an extra fee. Alternatively they can delete this item from the application.
The addition of extra classes cannot extend the scope of the original
application. (see also Amendments@pre-publication)
Note: Extra fees apply to the additional classes at registration and
renewal.
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Unusual trade marks
Q. What are shape trade
marks?
Shape trade marks are three-dimensional. Examples
of shape trade marks include bottles, toothbrushes, biscuits, chocolates and
pens.
Q. What sort of things should I consider if I am
filing a shape trade mark?
- you need to consider if the shape is something
that other people need to use. Does an object have to be that particular shape
if it is to work properly?
- you need to consider if the shape is common to the trade eg. a wine bottle
If a shape trade mark falls within these parameters then there may be difficulties
in trying to distinguish that shape from other shapes, and therefore there may
be difficulties in registering the trade mark. The applicant will need to show
that the shape does distinguish their good/services-that is, that the shape
will identify the goods/services as originating from the applicant. This may
be through the provision of evidence of use. The examiner of the application
or a legal practitioner should be contacted for further information.
The same considerations apply to applications to register an aspect of packaging
as a trade mark.
Q. What sort of things should I consider when applying
for a colour or colour combination as the actual trade mark?
- There should be no genuine need for the colour within the relevant market.
Do manufacturers within the industry typically colour their products this
way?
- The colour must not be essential to the use or function of the product.
Do others need to apply that particular colour on their product for it to
function properly? Eg. yellow or orange for safety products
If a colour trade mark falls within these parameters then there may be difficulties
in trying to distinguish that colour from other colours, and therefore there
may be difficulties in registering the trade mark. The applicant will need to
show that the colour does distinguish their good/services- that is, that the
colour/s will identify the goods/services as originating from the applicant.
This will be through the provision of evidence of use. The examiner of the application
or a legal practitioner can be contacted for further information.
Q. What are the requirements when applying for sound
and scent trade marks?
To be registrable a trade mark must be able to be
represented graphically and this also applies to sound and scent trade marks.
This means that a trade mark must be able to be represented by symbols in the
form of diagrams and/or writing.
- Sound trade marks must be represented by a precise description of the sound.
If the trade mark contains music then it can be represented by musical notation
and accompanied by a description along the lines of 'the trade mark consists
of the tune as played on a trombone' represented on the application form.
A sound can also be represented by words (eg. Clip, Clop, Moo) and must include
an accurate description of the trade mark, eg. 'the trade mark consists of
the sound of 2 steps taken by a cow on a pavement, followed by the sound of
a cow mooing'. The description of the trade mark will be entered on the Register
as an endorsement.
- Scent trade marks can be represented by a precise verbal description of
the scent. The application should include the trade mark represented graphically
(eg. 'the scent of apple blossoms') and a precise and accurate description
('the scent of apple blossoms applied to car tyres') which will be entered
as an endorsement.
Q. What should I consider when applying for a scent
or sound trade mark?
As with all trade marks, if the sound or scent is
one that other traders would normally want to use in respect of their goods
or services, or if it is descriptive and common to the trade, then it will have
difficulty getting registered, eg. a dial tone for telephone services or a lemon
scent for cleaning products are both common to the trade and would be very difficult
to register.
The provision of evidence of use may overcome the grounds for rejection of
such a trade mark. For more information contact the examiner of the application
or legal practitioner.
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Olympic trade marks
Q. What limitations
are there on the use of 'Olympic' trade marks?
The Olympic Insignia Protection Act 1987 states that the Australian Olympic
Committee (AOC) is the national owner of the Olympic rings symbol and the Olympic
motto. The AOC also owns ten registered Olympic designs and a number of torch
and flame designs. Only the AOC can use and license the use of the symbol,
motto and Olympic designs to other parties. The Olympic Insignia Protection
Act 1987 was amended in October 2001 and in part now protects the use
of the word "Olympic", "Olympiad" and their plurals and "Olympic
Games" in advertising and promotion. To use these Protected Olympic Expressions
a licence is required from the AOC. Full details can be found on the AOC website,
www.olympics.com.au
For limitations on the use of Olympic expressions as covered under the Olympic Insignia
Protection Amendment Act 2001 please refer to the IP
legislation section of our website.
For further information, contact Alan Grover, Group Manager Brand Protection and Special Projects at the AOC on (02) 8436 2172.
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Refund or remission fees
Q. Can I get my money
back if I change my mind or if my application is rejected?
Fees paid to the Office are not usually refunded.
The money covers the work that is required to look at the application or request,
regardless of the outcome of the action.
Only under very specific circumstances will the Registrar consider refunding
or remitting fees, either totally or partially. Generally, the Registrar will
only consider allowing a fee to be refunded or remitted if it is considered
that, because of an error or omission by the Trade Marks Office, a person became
liable to pay a fee that they wouldn't otherwise have had to pay.
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Registration of a trade mark
Q. How long does trade mark registration last?
A trade mark is initially registered for a period of ten years and continues
indefinitely as long as the renewal fees are paid every ten years.
Q. How much does registration cost?
Registration fees must be paid within 6 months of acceptance. The trade marks
fee page and fee schedule list all applicable fees.
Q. How much does renewal cost?
Renewal fees must be paid every ten years. The trade marks fee page and fee
schedule list all applicable fees.
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Representation of trade mark and scanning
Q. What is scanning?
Scanning captures the images of trade marks, other
than trade marks which are words in ordinary types, onto the imaging system.
Q. What is a graphical representation of the trade
mark?
A trade mark must be able to be represented graphically
and therefore the trade mark included in an application must be a graphical
representation, that is either drawn or written.
Each trade mark consisting of, or containing, a colour, scent, shape, sound
or aspect of packaging must also be accompanied by a precise and accurate description
of the trade mark. In the case of sound trade marks, cassette tapes of the sound
will also be required and in rare circumstances, an actual sample of the trade
mark may be required for three-dimensional trade marks. (see also unusual trade
marks)
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Revocation of acceptance
Q. What is revocation
of acceptance?
The acceptance of an application can be revoked,
i.e. withdrawn, if information comes to notice after acceptance which indicates
that the trade mark should not have been accepted.
Revocation of acceptance means that the application no longer carries the status
'Accepted' but re-enters the examination stream with the status 'Under Examination'.
The applicant is notified of the proposed revocation and is advised of any conditions
under which the application can remain accepted. The applicant is also given
the opportunity to be heard in the matter. One month is given for the applicant
to respond. If no response is received, acceptance is revoked and the revocation
is advertised in the Official Journal.
Q. What are the reasons for revocation of acceptance?
An application can only be revoked if the Registrar
is satisfied that it is reasonable to do so, taking account of all the circumstances
involved, such as an error or omission during the course of examination. If
information is received from examination staff, third parties or others with
specialised knowledge that calls into question the acceptance of the trade mark
the application may be revoked.
A change of opinion or failure to consider earlier precedent cases is not held
to be an omission.
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Series applications
Q. What is the purpose
or usefulness of series applications?
Under the Trade Marks Act 1995, you can apply for two or more trade marks that that closely resemble each other on one application. This gives you the option of covering different variations of your trade mark without having to submit separate applications for each variation.
However, not all trade marks that closely resemble each other will qualify as a series. There are substantial restrictions on the type of trade mark variations that can form a valid series.
Q. What constitutes a valid series application?
Firstly, trade marks in a series must closely resemble each other.
Secondly, the trade marks must differ only in one or more of 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;
- the colour of any part of the trade mark.
With these substantial restrictions on what sort of trade marks can form a valid series and additional costs involved in filing a series application, you should carefully consider whether your trade marks meet the requirements before filing a series application. If the series you file is not valid, the series fee is not refundable.
Q. Is a series application more expensive?
Yes. The Trade Mark fee schedule, including costs for a series application, is available on our web site at: http://www.ipaustralia.gov.au/trademarks/fees_index.shtm
Q. Can an applicant create a series application
out of a standard application?
No. Trade mark applications cannot be amended to expand on the scope of the rights originally claimed. You cannot later add trade marks to the original application as this would expand the number of trade marks claimed on the application as originally filed.
Q. Where can I find additional information and examples of valid and invalid series applications?
Further information and examples may be found in the Australian Trade Marks Manual of Practice and Procedure. This is a reference manual used by trade mark staff at IP Australia and can be accessed via the following link: http://www.ipaustralia.gov.au/resources/manuals_trademarks.shtml
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Trusts
Q. What are the requirements
for trusts?
An application for registration of a trade mark
in the name of the trustee or trustees is allowable and should be signed by
the trustee or trustees or a person who is empowered to sign on behalf of the
trustee or trustees.
An application in the name of a trust, unless this is in fact a company or
corporate entity, may be queried. This is because the trustee is the legal owner
of the property, not necessarily the 'trust' as such. (A trust basically involves
a trustee who owns a specific property but who deals with that property for
the benefit of another person or the advancement of a certain purpose (eg. a
charity).
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Use of letters ® and ™
Q. Who can use the ®?
You may use the ® (Registered symbol) next to
your trade mark once your trade mark is registered. If your trade mark is registered
overseas but not in Australia, you can also use the symbol, but you need to
show the country of registration close to it. Anyone can use the ™ symbol
(TM) as this does not indicate that the trade mark is registered.
Q. Is it an offence to use the ®, if your
trade mark is not registered? What can I do if someone is using it and they
do not have a trade mark registration?
Yes, it is an offence-see section 151 of the Trade
Marks Act 1995. The Trade Marks Office, however, does not police or investigate
such matters.
If you have real concerns about someone using the ®, you might consider
contacting the Australian Federal Police, as it is a criminal offence, to ask
them to investigate the matter. However, the AFP may not have the capacity to
follow up the matter and would need to assess it in the context of their other
priorities at the time.
Q. Is there a penalty if the letters ™ are
used?
No, however there is a penalty if ® is used
on an unregistered trade mark. If ® is used on a trade mark which is registered
overseas but not in Australia, the country of registration must be shown in
close proximity to the ®.
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Withdrawal or cancellation of trade mark
Q. Can we withdraw an
application which has been accepted?
The applicant can withdraw their application up
until registration. Once it has been registered, the owner would have to request
cancellation of his or her trade mark. There is no fee in either case. The applicant
should write a letter to the Registrar withdrawing the application.
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