Trademark registration in Australia

Australia, officially the Federal Republic of Australia, is a large country located in Oceania with an area of more than 7.6 million km² which is the sixth largest country in the world. Australia is surrounded by the Atlantic Ocean and the Timor Sea to the east, the Arafura Sea and the Carpentarian Sea to the north, the South Asian Sea and Indian Ocean to the west, and the Tasmanian Sea to the south. Australia has a prime geographical location in the Oceania region, which facilitates international trade and economic cooperation with countries in the region. In addition, the Australian economy is one of diversified and developed. Industries such as energy, mineral ores, agriculture, financial services, and tourism are all major contributors to economic growth. Therefore, there are many businesses wishing to expand the scope of business investment in Australia, to be able to develop their brands, trademark registration is an important step to protect the rights and trademarks of businesses in Australia. The trademark registration process in this country is strictly regulated in accordance with intellectual property laws. In this article, Viet An Law will provide a detailed guide on the trademark registration process in Australia, helping customers better understand the necessary steps and important factors.

Legal basis

• Trademark Act 1995 (aggregated until February 27, 2020);
• Other relevant legal documents.

General overview of trademarks in Australia

Definition of “trademark” in Australia

A trademark provides legal protection for the customer’s brand and helps the customer differentiate the customer’s product or service in the market. Trademarks can be used for protection such as logos, phrases, words, letters, colors, sounds, scents, images, movements, aspects of packaging or any combination of these.

A trademark may be owned by the following entities: One or more individuals; A company; Manager of a fund; A political body; A governmental organization of a State, Territory or Federation.

Benefits of trademark registration

The registration of a trademark by the applicant offers the following benefits:

• A business asset. The more successful a trademark is, the more valuable your trademark becomes.
• The legal right to place the logo ® next to the business’s trademark.
• The exclusive right to use a business’s trademarks in Australia.
• The ability to legally prevent others from using a business’s trademark.
• The ability to sell or grant the right to use the trademark to others.

Trademark filings in Australia

The applicant will need to provide the following information:

• Ownership and contact information (including postal address i.e. postal code);
• A sample of the applicant’s trademark (for example, an image of the logo or a sound recording of the sound);
• A list of products and/or services to which the applicant’s trademark intends to apply and the corresponding group number;
• Proof of payment;
• Power of attorney (in case the applicant submits an application through a representative).

How to file a trademark application in Australia

To file a trademark application in Australia, an applicant needs to take the following steps:

• Create an account with the online service at the following web address: https://portal.ipaustralia.gov.au/login?_gl=1%2a1q8dre4%2a_ga%2aOTcyNzYzODU2LjE3MDgxMzUzNTA.%2a_ga_GMT4KC15KS%2aMTcwODEzNTMzOS4xLjEuMTcwODEzNzU3NS4wLjAuMA..
• Complete the required information in the application form. This process only takes about 15 minutes, and the applicant can save his progress as he or she proceeds.

There are 2 online application mechanisms in Australia including: TM Headstart and Standard Application Submission

Pre-Application Service (TM Headstart)

TM Headstart is a pre-application service. This is a service for applicants who have never filed a trademark application before and want an examiner to review your application and detect common errors. When an applicant uses TM Headstart, an examiner will evaluate the applicant’s trademark before formally filing the application. The applicant will receive feedback and have the opportunity to amend his application, increasing the likelihood of being granted a trademark protection certificate. After receiving a response, the applicant has five business days to correct the changes (or formalize the applicant’s application invoice). If the applicant’s application is granted trademark protection, the applicant’s trademark will take effect from the date of official filing of his application.

Submit a standard application

This service is suitable for applicants who already have experience in filing trademark applications without a checker to review the validity of the application. For this service, only minor changes in the trademark application are allowed after it has been submitted, if the trademark is granted a protection certificate, the trademark is protected from the date of filing the application.

Trademark registration fees in Australia

Trademark application processing in Australia

It usually takes three to four months for a trademark application to conduct due diligence. The Australian Office of Industrial Property will notify the applicant via the registered online service mailbox during the trademark application process. If the applicant’s application goes through due diligence, the Australian Industrial Property Authority will post the disclosure. The applicant’s trademark is published within two months in the Official Australian Trademark Bulletin and Australian Trademark Search. Anyone can object to a petitioner’s trademark during this time. If no one objects to the applicant’s trademark registration, or through a response to resolve all these objections, the Australian Chamber of Industrial Property will proceed to issue a patent of protection.

Trademark registration in Australia through the Madrid System

The Madrid system is a convenient and cost-effective solution for global trademark registration and management. File a single international trademark application and pay a one-time fee to apply for protection in up to 130 countries. Claimants can modify, renew or expand their global trademark portfolio through a centralized system.

Madrid Agreement:

• Australia joined the Madrid Agreement on 8 March 1949.
• The Madrid Agreement allows trademark owners to register their trademarks in a single member state (“country of origin”) and then extend protection to other member states (“nominating countries”) through a single international application.

Madrid Protocol:

• Australia accessed the Madrid Protocol on 11 July 2006.
• The Madrid Protocol modernizes and simplifies the international registration system of trademarks established under the Madrid Agreement.
• The Madrid Protocol allows trademark owners to designate additional member states to an international application already filed under the Madrid Agreement or Madrid Protocol.

Trademark registration dossier under the Madrid System

The Madrid Application consists of the Madrid Single of Vietnamese origin and the Madrid Single with the Vietnamese designation.

For the Madrid Application of Vietnamese origin, the applicant must submit through the state management agency for industrial property rights, i.e. the National Office of Intellectual Property of Vietnam. According to Article 25 of Decree 65/2023/ND-CP, a Madrid application of Vietnamese origin includes the following documents:

• Declaration of request for international registration of a trademark of Vietnamese origin (Form No. 01 in Vietnamese in Appendix II of Decree 65/2023/ND-CP);
• 02 MM2 declarations according to the form of the International Office in English or French;
• 02 trademark samples exactly as the trademark in the application filed in Vietnam (establishment application) or trademark registration certificate (establishment registration);
• 02 MM18 declarations in English (if the application has a US designation);
• Written authorization in Vietnamese (According to the form of Viet An Law Firm);
• Documents of payment of fees for international registration of trademarks of Vietnamese origin;
• Other relevant documents (if necessary).

Application fees through the Madrid System

The fees include:

• Basic fee (653 Swiss francs; or 903 Swiss francs for a color mark) (Note! A 90% discount applies if the applicant lodges an application with the Intellectual Property Office of a developing country at least); and
• Additional fees depend on where the claimant wishes to protect his trademark and the number of groups of goods and services he or she wishes to register. In order to expand its geographic reach, or modify or renew its international registration, the applicant will have to pay additional fees.

Trademark registration service in Australia of Viet An Law Firm

• Perform the search and notify customers in writing of the results of trademark search in Australia;
• Draft documents and file and monitor the status of trademark filings in Australia on behalf of trademark owners;
• Inform, advise and handle deficiencies/refusals of competent State agencies (if any) in the process of monitoring trademark applications in Australia;
• Support follow-up, representation to resolve objections and feedback with intellectual property representatives performing procedures in Australia.
• Receive dispatches, certificates and hand over to customers (if any).

If you need to file a trademark application in Australia, please contact Viet An Law Firm for the most effective support.