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Trademark registration in Australia

With a long history of diplomatic relations between Vietnam and Australia (Australia), the Australian market is considered one of Vietnam’s major trading partners. This is a good opportunity for Vietnamese businesses to promote exporting goods to this market. Therefore, one of the issues businesses need to pay attention to is the trademark registration procedure in Australia. In the following article, Viet An Law will briefly present issues related to trademark registration in Australia.

Trademark registration in Australia

Legal basis

  • Australian Trademarks Act 1995.

Trademarks are protected in Australia

Australia also provides protection for visual or audible marks, excluding everyday words, phrases or images that directly describe goods or services and certain words, phrases and images. certain photos in special cases, including:

  • These words, phrases and images have become ubiquitous;
  • Geographic name;
  • Common name, even if it is your own;
  • Prohibition signs;
  • Limited financial conditions.

Trademarks that are protected in Australia often use the ® symbol next to the registered mark to identify its protected status and can prevent third parties from misusing the mark.

Information and documents needed to carry out trademark registration procedures in Australia

  • Trademark samples or trademark sound recordings require registration.
  • List of goods/ services (in Vietnamese and English).
  • Applicant information (in Vietnamese and English).
  • Claim request of priority rights (if any);
  • Documents proving payment obligations have been fulfilled;
  • Power of attorney (according to the form prepared by Viet An).

How to apply for trademark registration

To register a trademark, the applicant must:

  • Reside (or have a domiciled agent) in Australia or New Zealand, and
  • Intend to use the trademark for the goods and/or services in your application.

Therefore, foreign applicants who want to apply directly must do so through a legal intellectual property representative in Australia or New Zealand. Viet An Law provides representative services to connect with these representatives to carry out procedures in the most effective way.

In Australia, a pre-application service, called TM Headstart, exists in addition to the standard registration process. This service includes an initial review of the trademark application and allows for corrections before official filing. This service is conducted by IP Australia and is only available to first-time trademark applicants. The Tm Headstart’s purpose is to increase the chances of successfully registering trademark protection. However, this service cannot guarantee 100% success and provide applicants with a specific legal proposal.

In addition to filing directly at the Australian IP Australia, applicants can apply through WIPO’s Madrid system.

Direct trademark registration process in Australia

Registering a trademark in Australia takes at least seven months with minimum fee of $250.

Step 1: Search trademark in Australia

  • The search can be performed independently in the standard filing process, or by the IP Australia with a pre-application service.
  • The results of a trademark search are usually sent to clients within 5-10 working days from the date the trademark is sent for search.
  • With the pre-application service, experts from IP Australia, after the preliminary examination (within 5 days), can give the application owner about 5 days to make amendments to the application (fee included) and 5 days to convert it into a standard registration application if the application owner wants to continue registering the trademark (pay the attached fee).
  • Note: The search results can only approximate about 80% of the possibility of being granted a protection certificate for the trademark, so this search result is for reference only and is not a basis for IP Australia grants or refuses to grant a protection certificate for your trademark.
  • Trademark registration application owners can search and check trademark samples themselves in the registration agency’s database, such as:

Step 2: Submit trademark registration application at the Australian IP Australia

  • After searching, if the trademark is capable of registration, the client should apply at IP Australia. After applying within 05-07 working days, the application number will be recorded according to the actual date of submission.

Step 3: Examination of application

  • In case the application is submitted without the advance application service, the appraiser will consider the substantive examination within 08-10 months from the date of application submission.
  • The trademark after examination will be published in the Official Australian Trademark Journal (https://search.ipaustralia.gov.au/trademarks/journals) and the Australian Trademark Database for further review. Receive objections within 02 months.
  • If no party objects, the trademark claim will be registered in Australia and a certificate of registration will be issued.
  • In addition, the time may be extended if the application has objections or complaints (independent complaint costs).

Step 4: Notice of grant or refusal to grant trademark registration certificate

  • Clients will receive a notice of granting a protection title or a notice of refusal to grant a protection title with attached reasons for refusal.
  • Within 01 – 02 months from the date of payment of the protection certificate fee, you will receive the trademark protection certificate.

Trademark registration fees in Australia

The fee depends on the number of goods and services listed in the trademark application and on the form in which the application is filed.

Apply via TM Headstart

Registering a trademark through TM Headstart (pre-registration service) costs a minimum of 330 USD. Trademark registration application fees are prescribed for each group of products and services as follows:

  • State fee required for pre-registration (TM Headstart): 200 USD
  • Application amendment fee (if any):
    • Change of intellectual property representative: 150 USD
    • Additional group of goods and services: 200 USD
  • Fee for converting to standard application: 130 USD
  • Service fee (in case the foreign applicant files directly through an intellectual property representative in Australia): 250 – 400 USD.

Time to pay fees:

  • Submitted at the time of application submission.
  • Submit if changes need to be made before the application is approved for protection.
  • Filed at time of publication (application has been granted preliminary protection unless objections are received after publication)

Submit a standard application

The standard trademark application fee is a minimum of $250. The fee will increase if the applicant has not yet grouped goods and services according to the Nice classification, specifically:

Quantity Classified goods and services Not classified goods and services
A trademark 250 USD 400 USD
Many trademarks / 1 single owner 400 USD 550 USD

In addition, for each additional group of goods and services, the fee payable is 250 USD for each additional group in the same registration application.

Note:

  • The above fees do not include additional fees such as translation, certified, responding to objections from third parties, etc.
  • In case the application has errors or is refused or rejected according to the notice when processing the application, the paid fee will not be refunded and the application owner must proceed with the steps to register the trademark (including the fee payment step) from the beginning. Therefore, the applicant needs to ensure the trademark application is accurate before officially submitting it.

Some questions related to trademark registration in Australia

How can Vietnamese people register trademarks in Australia?

For foreign applicants, Australian law is similar to Vietnamese law, stipulating two main forms for submitting applications: they must apply through an intellectual property representative legally registered in Australia to proceed with the application procedure directly at the Department.

The applicant will conduct trademark registration procedures at IP Australia responsible for receiving and processing requests for industrial property protection. Current application forms used:

  • Online portal, this form requires applicants to have a live public service account.
  • By mail, or postal with a higher filing fee (450 USD/ 1 trademark and 600 USD/ multiple trademarks of the same applicant).

In addition, Australia has been a member of the Madrid Protocol since 2001, so Vietnamese applicants can use the Madrid filing system with Australian intent to register trademarks in Australia. Applications entering the national processing stage will be processed by the Australian IP Australia according to standard procedures.

How long are trademarks protected in Australia?

Trademarks are protected in all Australian states and territories for an initial period of 10 years with unlimited renewals. Trademark renewal is regulated as follows:

  • Where payment is made three months (or less) before the renewal date, the fee in effect on the date of payment will apply.
  • Where fees are paid earlier than three months before your renewal, fees in effect three months before the due date will apply.
  • Where a renewal fee is paid after the due date, the fee in effect on the due date will be applied (plus a late surcharge).
  • In case of late renewal, it can still be made up to six months after the renewal date, provided that a surcharge (half of WIPO’s basic renewal fee) is paid with the renewal request.

Consulting services on trademark registration in Australia of Viet An Law Firm

  • Preliminary consultation before carrying out necessary procedures on behalf of the client at the competent State agency in Australia related to trademark registration procedures;
  • Search and notify clients in writing of the search results;
  • Draft documents and directly submit and monitor the status of trademark registration applications in Australia on behalf of clients;
  • Notify, advise, and handle shortcomings/rejections from competent State agencies (if any) during the application tracking process in Australia;
  • Receive official dispatches and certificates and hand them over to clients (if a protection certificate is granted).

If you need to apply for trademark registration in Australia and other countries, please contact Viet An Law for the most effective support.

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