The Australian Trade Marks Act defines a trade mark as a sign used, or intended to be used to distinguish goods or services dealt with or provided in the course of trade from goods or services so dealt with or provided by another person.
A sign may include any one of the following or combinations of the following: any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape colour, sound or scent.
What is the process for registering a trade mark in Australia?
The first step in registering a trade mark is the lodgement of an application at IP Australia. The Registrar of Trade Marks must examine the application and report whether there are grounds under the Trade Marks Act for rejecting the application. The Registrar must, after examination, accept the application if satisfied that the application has not been made in accordance with the Trade Marks Act or there are grounds under the Trade Marks Act for rejecting it.
An application for registration of a trade mark must be rejected if:
- the trade mark contains or consists of certain proscribed signed, for example the words “patent” or “patented”;
- the trade mark cannot be represented graphically;
- the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons;
- the trade mark contains or consists of scandalous matter or its use would be contrary to law;
- use of the trade mark in respect of those particular goods or services would be likely to deceive or cause confusion;
- if the applicant’s trade mark is substantially identical or deceptively similar to the trade mark which has been prior registered or whose registration is earlier sought by another person where: the applicant’s application relates to goods, in respect of similar goods or closely related services; and where the applicant’s application relates to services, in respect of similar services or closely related goods.
Upon passing examination, acceptance of the application for registration is published whereafter third parties may oppose the registration. In the absence of any opposition a certificate of registration will be issued.
When is a trade mark distinctive?
A key concept of trade mark law is distinctiveness. The qualifying criterion is not whether the mark has acquired a distinctive character but whether the mark has the capacity to distinguish the applicant’s goods or services. The distinctiveness requirement of the Trade Marks Act is met by establishing the trade mark is inherently distinctive or by showing that it has an acquired or actual distinctiveness of a combination of both.
What is the term of a registered trade mark?
A trade mark registration can be renewed in perpetuity in 10 year intervals dating from the filing date of the trade mark application.
Where can one determine whether a particular trade mark has been registered in Australia?
Information on Australian registered trade marks and trade mark applications can be located at IP Australia ATMOSS database: