Frequently Asked Questions

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 1-2 days of filing. However, there are some times when details are published on the same day as filing, depending on circumstances and volume of filings.

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.

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.

Details of new applications are published within approximately 1-2 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

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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.

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?

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.

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.

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.

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.

• 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.

• 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.

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.

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.

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.

Registration fees must be paid within 6 months of acceptance. The trade marks fee page and fee schedule list all applicable fees.

Renewal fees must be paid every ten years. The trade marks fee page and fee schedule list all applicable fees.

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)

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.

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.

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.

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).

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.

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.

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 ®.